On The Revision Of Markush Claims In Invalidation Procedure

Patent invalidity examination procedure is a kind of "re-examination" procedure to further examine the "validity" of patents which in order to improve the quality of authorized patents in China after the patents have been authorized.This procedure has a great impact on patentees and invalid applicants which requires careful decision-making.However,in recent years,there are some differences between the Patent Re-examination Board and the court in the examination of patent invalidity,especially on the nature and modification of Markush Claims,which has brought a lot of confusion to the patentees and the invalid applicants.This paper mainly expounds the nature of Markush Claims and changes and other issues in the invalidation process through a real case.In addition to the introduction and conclusion,this paper mainly includes the following five parts:The first part takes the case to solve the problem to be solved in this paper.This paper introduces the basic situation of the patents involved in the selected cases,and proposes the main problems to be solved according to the selected cases.The second part is an overview of the basic theoretical issues of Markush claims.Firstly,it discusses what Markush claims are,and holds that one or more constituent elements can be selected in more than two optional elements in a single claim,and that the right requirement with optional elements is Markush claims.Secondly,the origin and development of Markush claims are elaborated from the perspective of chemical product patents.The third part is about the nature of Markush claims.Firstly,three theories about the nature of Markush claims are briefly explained: parallel techincal solutions perspective,whole technical solution perspective and special generalization theory;secondly,the similarities and differences of the three viewpoints are explained in terms of novelty and singularity;thirdly,the positions of the United States,Europe and Japan on the nature of Markush claims are explained;lastly,from the selected cases in this paper,by comparing the three points,it can be concluded that "special generalization theory" can better shelve disputes at this stage.The fourth part discusses the modification of the Markush claims in the invalidation procedure.This paper introduces the specific disputes over whether Markush claims can be modified in China's patent invalidation procedure,and the attitudes of other patent procedures and extraterritorial patent examination practices in the revision of Markush claims.The fifth part analyzes the path of modifying the Markush claims in the patent invalidation procedure.Firstly,the rationality of allowing the Markush claims to be modified in invalid programs is explained.Then,the principle of modifying the Markush claims in the invalid procedure is explained.Finally,the specific requirements for modifying the Markush claims in the invalid procedure are proposed.