Page 148 - 2017 White Paper
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7 White Paper on the Business Environment in China
lieu of how many active users the Defendants’videogame Beijing First Intermediate People’s Court sustained the
had was a large influence. The Court also noted that No. 12582 Decision. Lambert Company appealed. Beijing
videogames tend to have short lifecycles because the High People’s Court of the second instance held that
advancement of computer processing and graphics the technical issue to be solved by this invention was to
technology is growing so quickly videogames are often obtain the crystalline form of atorvastatin hemicalcium
at risk of obsolescence. Economic damages would also be trihydrate. The main issue to be solved by the patent
difficult to quantify. This case characterizes the strength was to overcome the technical issue that “formless
of the Chinese Court system to on occasion act quickly atorvastatin hemicalcium trihydrate is not suitable to
and swiftly in the face of overt infringement. filtration and drying in large scale production”. Since
the Patent Reexamination Board failed to determine the
WARNER-LAMBERT COMPANY LLC v. the technical issue to be solved by this invention, nor did it
Patent Reexamination Board of the SIPO clarify what parameters were the “chemical and physical
properties related to the technical issue to be solved”, the
1. Case Brief determination made by the Patent Reexamination Board
that the invention did not comply with Clause 3, Article 26
On 8th July 1996 WARNER-LAMBERT COMPANY LLC of the Patent Law without comprehensively considering
(“Lambert Company”) applied for the invention patent the technical issue to be solved by this invention was
named “Pyrrole-1-heptanoic acid; beta, delta-dihydroxy- improper. The Patent Reexamination Board and Jialin
2-(4-fluorophenyl)-5-(1-methylethyl)-3-phenyl-4- Company were dissatisfied and applied to the Supreme
((phenylamino) carbonyl)-calcium salt (2:1)” that and was People’s Court for retrial. The Supreme People’s Court
granted on July 10th 2002, patent No. 96195564.3. The tried this case directly and revoked the judgment of the
subject of claim No.1 of the patent of this case was I typed second instance and sustained the judgment of the first
crystallized atorvastatin hemicalcium trihydrate with 1-8 instance court on April 16th 2015.
mole of water and the feature was defined with XPRD.
Beijing Jialin Pharmaceutical Co., Ltd. (“Jialin Company”) 2. Comment
and Zhang Chu requested the Patent Reexamination
Board of the SIPO (Patent Reexamination Board) declare This case turned on the sufficient disclosure of the
said patent invalid. The Patent Reexamination Board, after description of an invention in the chemical field. Both
review, made No. 13582 Decision on Request Declare the the application of law and the technical issues were
Patent Invalid (No. 13582 Decision) on June 17th 2009, complicated. Since the patent right had enormous
and declared all patent rights invalid on the grounds that economic consequences, the trial attracted great
the patent did not comply with the provision of Clause 3, attention in China and abroad. The Supreme People’s
Article 26 of the Patent Law. Court held that the description of the invention patent
should specify the confirmation, preparation, and usage
The main reasons were as follows. The description of chemical products. To be specific, when invention is
failed to provide any qualitative or quantitative data a chemical, the description should explain the chemical
proving that the I typed crystallized atorvastatin structure, the parameters of the chemical, and the physical
hemicalcium trihydrate did include 1-8 mole of water properties related to the technical issue to be solved by
and it cannot be exactly inferred from the procedures the invention to enable a knowledgeable person in the
of its preparation and the XPRD data and spectrum that field to identify the chemical. The description should also
were used to reflect the crystallization of the product disclose at least one method of preparation to enable a
that its product included 1-8 mole of water (or 3 moles). person knowledgeable in the field to implement it. Based
Therefore, the Board cannot confirm the actual product on this standard, the description of the patent of this case
protected by the claim. In other words, the Board did not comply with the provision of Article 26, Clause 3
cannot be sure how to prepare the I typed crystallized of the Patent Law.
atorvastatin hemicalcium trihydrate with 1-8 mole of
water according to the contents of the description of the
claims of the patent. Lambert Company was dissatisfied
and initiated an administrative lawsuit.
148
lieu of how many active users the Defendants’videogame Beijing First Intermediate People’s Court sustained the
had was a large influence. The Court also noted that No. 12582 Decision. Lambert Company appealed. Beijing
videogames tend to have short lifecycles because the High People’s Court of the second instance held that
advancement of computer processing and graphics the technical issue to be solved by this invention was to
technology is growing so quickly videogames are often obtain the crystalline form of atorvastatin hemicalcium
at risk of obsolescence. Economic damages would also be trihydrate. The main issue to be solved by the patent
difficult to quantify. This case characterizes the strength was to overcome the technical issue that “formless
of the Chinese Court system to on occasion act quickly atorvastatin hemicalcium trihydrate is not suitable to
and swiftly in the face of overt infringement. filtration and drying in large scale production”. Since
the Patent Reexamination Board failed to determine the
WARNER-LAMBERT COMPANY LLC v. the technical issue to be solved by this invention, nor did it
Patent Reexamination Board of the SIPO clarify what parameters were the “chemical and physical
properties related to the technical issue to be solved”, the
1. Case Brief determination made by the Patent Reexamination Board
that the invention did not comply with Clause 3, Article 26
On 8th July 1996 WARNER-LAMBERT COMPANY LLC of the Patent Law without comprehensively considering
(“Lambert Company”) applied for the invention patent the technical issue to be solved by this invention was
named “Pyrrole-1-heptanoic acid; beta, delta-dihydroxy- improper. The Patent Reexamination Board and Jialin
2-(4-fluorophenyl)-5-(1-methylethyl)-3-phenyl-4- Company were dissatisfied and applied to the Supreme
((phenylamino) carbonyl)-calcium salt (2:1)” that and was People’s Court for retrial. The Supreme People’s Court
granted on July 10th 2002, patent No. 96195564.3. The tried this case directly and revoked the judgment of the
subject of claim No.1 of the patent of this case was I typed second instance and sustained the judgment of the first
crystallized atorvastatin hemicalcium trihydrate with 1-8 instance court on April 16th 2015.
mole of water and the feature was defined with XPRD.
Beijing Jialin Pharmaceutical Co., Ltd. (“Jialin Company”) 2. Comment
and Zhang Chu requested the Patent Reexamination
Board of the SIPO (Patent Reexamination Board) declare This case turned on the sufficient disclosure of the
said patent invalid. The Patent Reexamination Board, after description of an invention in the chemical field. Both
review, made No. 13582 Decision on Request Declare the the application of law and the technical issues were
Patent Invalid (No. 13582 Decision) on June 17th 2009, complicated. Since the patent right had enormous
and declared all patent rights invalid on the grounds that economic consequences, the trial attracted great
the patent did not comply with the provision of Clause 3, attention in China and abroad. The Supreme People’s
Article 26 of the Patent Law. Court held that the description of the invention patent
should specify the confirmation, preparation, and usage
The main reasons were as follows. The description of chemical products. To be specific, when invention is
failed to provide any qualitative or quantitative data a chemical, the description should explain the chemical
proving that the I typed crystallized atorvastatin structure, the parameters of the chemical, and the physical
hemicalcium trihydrate did include 1-8 mole of water properties related to the technical issue to be solved by
and it cannot be exactly inferred from the procedures the invention to enable a knowledgeable person in the
of its preparation and the XPRD data and spectrum that field to identify the chemical. The description should also
were used to reflect the crystallization of the product disclose at least one method of preparation to enable a
that its product included 1-8 mole of water (or 3 moles). person knowledgeable in the field to implement it. Based
Therefore, the Board cannot confirm the actual product on this standard, the description of the patent of this case
protected by the claim. In other words, the Board did not comply with the provision of Article 26, Clause 3
cannot be sure how to prepare the I typed crystallized of the Patent Law.
atorvastatin hemicalcium trihydrate with 1-8 mole of
water according to the contents of the description of the
claims of the patent. Lambert Company was dissatisfied
and initiated an administrative lawsuit.
148
