In BO Wanqing v. Chengdu Nanxun, etc., which was publicly announced by the Supreme Court as one of the directive IP cases that all courts shall follow, the Supreme Court held that a civil court has a right to directly reject a patent infringement suit if claims of the patent are indefinite.

BO Wanqing sued Chengdu Nanxu, etc. for infringement to his Chinese utility model patent entitled “Electromagnetic Pollution Protective Clothing”.  In the first instance heard by Intermediate Court of Chengdu City, BO’spleading was totally rejected on the ground that a feature of “the metal web or film being made of metal filaments or metal powders with high magnetic conductivity and no remanence” in claims was considered as indefinite.  BO appealed the decision before Sichuan Higher Court and then Supreme Court.  Both of the appeal Courts denied BO’s argument.

According to the Supreme Court’s gist to this directive case, if expressions of a patent claim has an obvious flaw and one cannot understand the exact meaning of the flawed expression by taking into consideration of description, drawings, common knowledge and prior arts, then it does not make a sense to compare the claim inquestion with the accused technical solution. Under such a situation, no infringement shall be found.

Traditionally, a civil court will not determine whether a claim is clear or not.  In stead, if the civil court thinks that the claim is questionable, it normally will guide the defendant to go to the Patent Re-Examination Board (PRB) of Chinese Patent Office requesting for invalidation of a patent having unclear claims.  This, however, could cause years of fighting in patent invalidation procedure because there are PRB procedure, first & second instance appeal and even judicial review by the Supreme Court ahead.  During this period, the civil court has to suspendthe case until all the patent invalidation procedures are exhausted.

In order to reduce the above litigation exhaustion, some Chinese local civil courts began to make direct rejections to patents with unclear claims.  However, such rule of operation was quite debated in the IP industry until announcement of the present directive case by the Supreme Court.

Though such a new rule can effectively reduce the litigation exhaustion problem, it, in practice, might also possibly bring a rather negative impact to the current China patent system.  Under the current system, patentability including novelty, inventiveness, enablement and clarity ofclaims, etc. has to be under control of some special Authorities in Beijing such as Patent Office, PRB and Administrative Section of special Courts.  If in the patent invalidation procedure, the Authorities make an administrative decision supporting that a claim is indeed clear whereas a local civil court rejects the case due to indefiniteness of the same claim, this will cause a conflict.

More severely, for some local civil courts not having rich experience in handling of patent infringement cases, if this rule was wildly used without any effective restriction, it would possibly lead to a great unpredictability in patent enforcement actions. Therefore, in the SupremeCourts comments to this case, this rule can be adopted only under a condition that a claim is obvious flawy.  Anxiously, how would this rule be adopted correctly is still to be observed.

Another important message from this case is that, on the broad sense, any indefinite languages in claims such as “high”, “low”, “big”, “small”, “near”, “far” would possibly trigger the rule.  It should always be kept in mind that a wording “high magnetic conductivity” ruined a patent!