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2026-03
One Case a Day | China: Substantial Identity in Double Patenting - "Resistance Sensor" Case - Invalidation Decision No. 563603 (2024)
Case Introduction
Late at night. Today, we share a fascinating case.
Previously, for applications filed on the same day, to overcome double patenting, one could choose to abandon the already granted utility model or amend the claims of the invention application. In this case, the applicant added technical features to Claim 1, formally meeting the requirement of non-duplication. However, during the invalidation proceedings, it was determined upon examination that the added technical features were objectively necessary for the technical solution protected by the claims. Consequently, the protection scope of the amended invention claim was not substantially modified, and the defect of double patenting still existed.
Case Information
- Application Number: 200710102376.3
- Invention Title: A Single-Chip Z-Axis Linear Magnetoresistive Sensor with Calibration/Reset Coils
- Invalidation Decision Number: No. 563603
- Case Number: 4W115638
- Decision Date: February 28, 2024
Key Points of the Decision
For inventions or utility models, the term "the same invention-creation" in Article 9 of the Patent Law refers to claims with identical protection scope existing in two or more applications (or patents). When determining whether they constitute the same invention-creation, the content of the claims of the two invention or utility model patent applications or patents should be compared, rather than comparing the claims with the entire content of the patent application or patent documents. During the determination, if a claim of one patent application or patent has the same protection scope as a claim of another patent application or patent, they should be considered the same invention-creation.
If a technical feature defined in a claim is objectively necessary for the technical solution protected by that claim, and such definition does not substantially alter the protection scope of the claim, it does not have a substantive impact on whether double patenting is constituted.
Key Points of the Case
The involved patent relates to an invention patent for a single-chip Z-axis linear magnetoresistive sensor with calibration/reset coils, which has a utility model patent (2015200076903) filed on the same day. During the examination of the invention application, an office action was received, stating that "the utility model patent filed on the same day and this application belong to the same invention-creation, requiring amendment of the claims of this application or submission of a statement abandoning the utility model patent right filed on the same day" (Author's note: Currently, double patenting can only be overcome by abandoning the earlier utility model).
The patentee chose to overcome double patenting by amendment, adding the technical features "the calibration coil is a planar calibration coil (A) or a three-dimensional calibration coil (B)" and "the reset coil (C) is a planar reset coil or a three-dimensional reset coil (D)" to Claim 1.
The patentee believed that Claim 1 included four combination schemes: AC, AD, BC, and BD, whereas the utility model claims did not include any of these combinations, thus overcoming the double patenting provision.
The collegial panel held that in this field, calibration coils and reset coils necessarily manifest as "planar" or "three-dimensional" arrangements. Although Claim 1 of the utility model patent did not specify the specific arrangement of the calibration and reset coils, they also necessarily manifest as "planar" or "three-dimensional" arrangements. Therefore, double patenting was constituted.
The second-instance court ((2024) Supreme People's Court Zhi Xing Zhong No. 1262) further pointed out that if a technical feature defined in a claim is objectively necessary for the technical solution protected by that claim, and such definition does not substantially alter the protection scope of the claim, it does not have a substantive impact on whether double patenting is constituted. It is well-known in the field that calibration coils and reset coils necessarily manifest as "planar" or "three-dimensional" arrangements. Based on the technical characteristics of this field and the general understanding of those skilled in the art, the above technical features are insufficient to distinguish the protection scope defined by Claim 1 of this patent from Claim 1 of the utility model patent. Therefore, they belong to the same invention-creation.
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