How to Judge the “Sufficiency of Disclosure in Specification” Issue? - The Latest Criterion from the Supreme Court
Recently, the Supreme Court of China made the latest judgment of the validity of Xiao-i Chat Robot patent. This case has received widespread attention over its life cycle of the eight years, not only because the other party is Apple, but also the criterion for judging “sufficiency of disclosure” issue. The judgment indicates that the patent is valid, in which the Supreme Court proposed a latest and clear way of judging whether a solution is sufficiently disclosed in the specification (1). This article will summarize and discuss this hot case.
II. Case Overview
This case relates to an invention patent with the patent number CN200410053749.9, entitled “a chat robot system” (referred to as the patent). This patent was granted on July 22, 2009, and the current owner is Shanghai Zhizhen Intelligent Network Technology Co., Ltd. (hereinafter referred to as Zhizhen).
Apple Computer Trading (Shanghai) Co., Ltd. (hereinafter referred to as Apple) filed an invalidation request regarding the patent on November 19, 2012. This is mainly because the solution claimed in this patent is highly related to the Siri program which is widely used in Apple’s mobile devices. Patent Reexamination Board of the Chinese Patent Office (hereinafter referred to as PRB) issued an Invalidation Decision on September 2013. The Decision maintained the patent right as valid. Apple appealed the Decision. The patent administrative litigation went through the first trial, second trial, and retrial. It takes nearly eight years from the invalidation request to the Judgment of the retrial. The process of the administrative litigation is summarized below.
III. Key Issue
Both in the invalidation proceeding and the administrative litigation, one of the key issues was that - whether the invention is sufficiently disclosed in the specification such that those skilled in the art could implement the invention.
Claim 1 of the patent recites that:
“1. A chat robot system, at least including:
a user; and
a chat robot …, characterized in that the chat robot further has a query server and its corresponding database and a game server, and the chat robot is provided with a filter for distinguishing whether the user sentence received by the communication module being a formatted sentence or a natural language, and forwarding the user sentence to a corresponding server according to the distinguished result, the corresponding server including the artificial intelligence server, the query server or the game server.”
Among the features in claim 1, Apple particularly alleged that the specification of the patent does not sufficiently disclose how to use the game server to implement the game function. Therefore, the specification does not sufficiently disclose the invention, thus the patent does not comply with Article 26, paragraph 3 of the Patent Law (2).
PRB and 1st Instance Court
For this “sufficiency of disclosure” issue of the game server solution, both PRB and the 1st instance court held that, based on their ordinary technical knowledge, those skilled in the art would and could realize the function of using the game server of the chat robot system to perform interactive games (2), (3).
2nd Instance Court
The second instance court held a rather different opinion regarding this issue. The second instance court found that (4):
- The feature in relation to the game function is the essential feature in claim 1 of the patent; and
- Also, the feature is the distinct technical feature which makes claim 1 inventive over the prior art, this is indicated in the patentee’s observation in response to the 1st Office Action.
The second instance court further held that the specification only disclose a game server an idea of performing the interactive games, but how to connect the game server and other components of the chat robot is not disclosed.
The second instance court also set some examples of the non-disclosures:
- What kind of user input and content shall be transmitted to the game server?
- How to transmit the user's instructions to the game server?
According to the 2nd instance court, these details about the game server are not disclosed in the specification. Therefore, it was determined that the patent specification does not sufficiently disclose how to implement the game function defined in claim 1, thus does not comply with the Article 26, paragraph 3 of the Patent Law. Based on this determination, the 1st instance judgment and the invalidation decision were revoked.
In the judgment of the retrial, the Supreme Court again overturned the previous judgment. In this latest judgment, the Supreme Court proposed a new idea for determining whether some particular technical feature of the invention is sufficiently disclosed in the specification. That is, it should be the first work to determine whether the feature is shared by the patent and the closest prior art or not. If yes, the requirements for “sufficiency of disclosure” are lower; if no, that is the feature is distinguished from the prior art, the requirements for “sufficiency of disclosure” shall be higher (1).
IV. What is the Traditional Criteria?
Article 26, paragraph 3 of the Patent Law stipulates that the specification shall provide a clear and complete specification of the invention so as to enable those skilled in the art to carry out the invention. This requirement is generally referred to as “sufficiency of disclosure”.
According to the Patent Examination Guidelines, the criterion for judging “sufficiency of disclosure” is whether those skilled in the art, in accordance with the contents described in the specification, could implement the technical solution of the invention, solves its technical problem, and produces the expected technical effect.
The above criterion provided in the Patent Examination Guidelines has been confirmed in a guiding case from the Supreme Court (2014 Administrative Litigation Review No. 8). In that judgment, the Supreme Court held that the invention is sufficiently disclosed only the three points below are met at the same time:
- The technical solution could be achieved;
- The technical problem could be solved; and
- The expected effect could be produced.
Moreover, the Supreme Court also pointed out that these three points possess a logical relationship in order, and shall be determined sequentially.
V. How does the new criterion work?
The Supreme Court proposed a new criterion for judging the “sufficiency of disclosure” issue. That is, first determine whether the feature is shared by the patent and the closest prior art or not. On this basis of the determination, different standards are applied for judgment (1).
Basis for the new criterion
In section 2.2.6, Chapter 2 of Part II of the Patent Examination Guidelines (5), it is provided as follows for the “sufficiency of disclosure” issue. This provision forms the basis for the new criterion.
The Supreme Court further believes that logical point of the above provision is that “sufficiency of disclosure” is subject to those skilled in the art - requirements for the technical features within their ability range are relatively low, while requirements for technical features that are out of their ability range and distinguishing from the prior art are relatively high.
Application in Xiao-i patent
In the patent, according to the new criterion, it is necessary to first determine whether the game server feature belongs to a technical feature shared with the prior art, and then determine whether it is sufficiently disclosed.
1) How to understand the solution in relation to the game server?
The Supreme Court points out that, according to the patent specification and the evidence on file, it can be confirmed:
- The function of the game server described in the patent is performed by calling existing and mature game modules through formatted sentences;
- The use of formatted sentences to call the game module to implement the game function belongs to the existing technology before the application date - Zhizhen has submitted the judicial appraisal opinion and articles before the application date for proving that interactive games are common before the application date;
- Although the patent recites a game server and a query server based on their different functions, they are not limited to two physically separated servers. One server could provide both query and game functions. A certain toolbox in the evidence submitted by Apple in the invalidation proceeding integrates the functions of a game server and a query server.
2) Is the game server feature distinctive from the prior art?
The answer for the above question from the Supreme Court is NO. Basis for the answer is from the comprehensive consideration of the entire file history of the patent.
- In the 1st Office Action, the examiner has clearly stated that the game server is common in the related technical field. This view is also in line with the common knowledge in the art. In this case, it seems not reasonable that the patent was granted because it has a distinct feature of the game Server over the cited prior art.
- Zhizhen incorporated the features related to the “filter” in the response of the 3rd Office Action, and the patent was granted mainly based on this substantial claim amendment.
- This determination complies with the original claims 1, 4, and 5. In these claims, various dialogues between the user and the chat robot are emphasized, but not the game server.
3) Does the solution of the game server comply with A26.3 requirement?
In the case that the game server is not a distinct feature from the prior art, the solution in relation to the game server may not be described in detail, according to the Patent Examination Guidelines. In this case, those skilled in the art would and could realize the solution, according the patent specification - one end of the chat robot is connected to the user, and the other end is connected to the server, the user can talk to the chat robot through the instant messaging platform or SMS platform, and then use formatted sentences to make interactive games with the robot. Therefore, the solution of the game server in this case is sufficiently disclosed in the specification. On this basis, the 2nd instance judgment was revoked.
VI. What can we learn from the judgment?
A New Criterion for the “sufficiency of disclosure” issue
As mentioned above, the Supreme Court proposed a new criterion for judging the “sufficiency of disclosure” issue. The below flow chart provides a process of the new criterion for easy reference. Predictably, this new criterion would influence the judgment of sufficiency of disclosure” issue not only in the litigations, but also in the prosecution stage and in the invalidation proceedings.
“Self-admission” from the applicant/patentee - shall be considered objectively
What is also learned from the judgment is that, the Supreme Court objectively considered Zhizhen’s observations in the file history - which is commonly called “self-admission”. Before the retrial, the “self-admission” that the game server is distinctive over the prior art is believed as an important point of the case. The 2nd instance judgment also cited the “self-admission”, and it was a factor to consider whether the game server is sufficiently disclosed (3), (6).
However, the Supreme Court points out that, the distinct technical feature recognized by the applicant/patentee is sometimes not objective, and may be different from the view of those skilled in the art. Therefore, the Supreme Court believes that the distinct technical feature shall be determined by a comprehensive consideration of the patent disclosure and the state of the art in the related field.
(1) (2017) Supreme Court Administrative Retrial Judgment No. 34
(2) PRB Invalidation Decision No. 21307
(3) (2014) Beijing Higher Court Administrative Judgment No. 2935
(4) (2014) Beijing First Intermediate Court Administrative Judgment No. 184
(5) Patent Examination Guidelines (2011)
(6) Rongcheng GAO, Xiao-i Robot Patent Invalidation Case - The Supreme Court has determined a new way of judging whether the invention is sufficiently disclosed in the specification - IPRdaily