Supreme People's Court Releases Opinions on Granting and Verifying Patents for Public Comment

On June 1, the Supreme People’s Court released a new draft judicial consultation on patent validity litigation for public comment. Comments are due within a month. 

Many aspects is included in the Consultation, including but not limited to the jurisdiction of the courts, interpretation of claims, application of substantive legal regulations in granting and verifying a patent, ways for judging, rules of evidence. It provides unified and specific criterion for judging some prominent issues of the moment.

For instance, as is mentioned in Annual Report of the Supreme People's Court on Intellectual Property Cases in 2017, among administrative cases regarding grant and verify a patent, the number of cases involving procedural problems has increased. The Consultation particularly stipulates in Articles 30 and 31 the situations where the Patent Reexamination Board acts against statutory procedures or beyond the statutory power.

Article 33 of the Consultation stipulates that “where the Patent Reexamination Board decides a patent shall be invalidated after examining all grounds and evidence involved, but the People’s Court judges such used to invalidate the patent as shown in the Decision of Invalidation are not reasonable, the Court shall revoke the Decision of Invalidation directly instead of request the Patent Reexamination Board to re-issue the decision”. Through this way, resources are saved and efficiency of the proceedings as a whole is raised.

Another issue that caught attentions is regarding post-filing experimental data. The Chinese Patent Law allows post-filing experimental data to prove the patentability of an invention patent application. However, the admissibility of the post-filing experimental data to chemical and pharmaceutical patent applications has been a much debated issue.

In 2017, the State Intellectual Property Office revised the Guidelines for Patent Examination, in which “experimental data submitted after the filing date will not be considered” in the chapter regarding examination on patent applications of the field of chemistry was deleted, and the revised Guidelines requires the technical effect to be proved by experimental data supplemented shall be able to obtained by people skilled in the art from the contents disclosed by the patent application.

Article 13 of the Consultation reflects the same principle. It would help unify the examination standards and connect different procedures in relation to granting and verifying a patent. It also helps strike the balance between the first-to-file principle and the protection of the patentee’s right.

The Supreme People’s Court started to draft the Consultation in about 2012. So far, nearly ten revisions have been made.

The revisions of Judicial Interpretation of the Supreme People's Court on Application of Law in Adjudicating Patent Infringement Cases (II) and Regulations of the Supreme People's Court on Several Issues during Adjudicating Cases Regarding Granting and Verifying a Trademark were started at about the same time and have taken effect respectively in April, 2016 and March, 2017.

The drafting of the Consultation is a part of the implementation of the National Intellectual Property Strategy - to reform the judicial system and mechanism regarding intellectual property, strengthen the intellectual property trial work - in order to provide judicial safeguard for building China as an innovation-originated nation.