## Facts

- Xu Wenqing obtained an invention patent for a method of preventing corrosion on the interior and exterior walls of steel tube bundles.
- Xing Pengwan filed a request with the State Intellectual Property Office’s Board of Patent Appeals and Interferences (BPAI) to declare Xu’s patent invalid.
- Xing argued that the patent claims were not supported by the patent description.
- In particular, Claim 1 described liquid anticorrosion treatment of the interior and exterior walls as a single method, while the description described the interior-wall and exterior-wall treatments as separate methods.
- The BPAI declared Xu’s patent invalid.
- The BPAI reached that result without giving Xu an opportunity to make a statement addressing the relevant grounds and facts relied upon for invalidation.
- Xu sued for judicial review in the Beijing Higher People’s Court, which ruled in favor of the BPAI and Xing.
- Xu appealed to the Supreme People’s Court of the People’s Republic of China.

## Issues

1. Whether the BPAI could invalidate Xu’s patent on the ground that the claims were not supported by the description where Claim 1 combined interior and exterior anticorrosion treatment into a single method but the description treated them separately.
2. Whether the BPAI’s failure to give Xu a chance to present a statement on the relevant grounds and facts before invalidating the patent rendered the invalidation decision unlawful in judicial review.

## Decision

- The Supreme People’s Court held that, in patent invalidation proceedings, the BPAI must give the patentee a real chance to present a statement on the grounds and facts that may lead to invalidation.
- The Court treated the right to present a statement as a basic procedural protection in an administrative adjudication that directly affects patent rights.
- The Court indicated that a support challenge requires comparing the scope of the claim with what the description actually discloses, including whether the claimed technical solution can be derived from the disclosed content rather than created by unsupported generalization.
- Because the BPAI invalidated the patent without first providing Xu an opportunity to address the dispositive grounds and facts, the Court determined that the administrative process was defective in a way that mattered to the outcome.
- The Supreme People’s Court set aside the lower court’s judgment sustaining the BPAI decision and required further handling consistent with the procedural requirements for participation in invalidation proceedings.

## Legal Principles

- In patent invalidation proceedings, the administrative decisionmaker must give the affected party a meaningful chance to present a statement on the key grounds and facts before issuing a decision that extinguishes patent rights.
- A court reviewing a patent invalidation decision may set aside the decision when the agency’s process denies the patentee a fair opportunity to be heard on the dispositive issues.
- A “support by the description” inquiry turns on whether the claim’s technical solution is grounded in what the description discloses, rather than being a mere aggregation or general statement that goes beyond the disclosed methods.
- When the description presents separate technical methods but the claim presents them as a single unified method, the validity analysis must address whether the unified method is actually disclosed (or can be derived) from the description, not assumed.

## Conclusion

In Judgment No. Minsantizi 2/2005, the Supreme People’s Court treated the patentee’s right to present a statement on the relevant grounds and facts as a required safeguard in patent invalidation and tied that procedural requirement to meaningful judicial review, while also framing the dispute as a classic “support by the description” conflict between a combined Claim 1 and a description that disclosed separate interior and exterior anticorrosion methods.


Xu Wenqing v. The Board of Patent Appeals and Interferences of the State Intellectual Property Office, and Xing Pengwan, Judgment No. Minsantizi 2/2005 (2005)