A patent is granted by the China Intellectual Property Administration ("CNIPA") as the administrative regulatory authority after no rejection grounds are found for the patent application upon examination, whereby the patentee could seek protection for his/her/its patented invention-creation through judicial and administrative remedies. In order to ensure the legitimacy of the grant and protection of patents and to balance the public interest, a patent invalidation system has also been set up, which modifies the situation that an unqualified patent is granted or a patent is granted with an inappropriate protection scope. Here, the Chinese patent invalidation proceedings are briefly introduced in combination with Chinese patent law and its relevant regulations for your reference when making a protection plan.
Invalidation Request
According to the related provisions of the Patent Law, from the date when the CNIPA announces the grant of a patent, any entity or individual who considers that the grant of patent is not in conformity with the relevant provisions of this law may request the CNIPA to declare the patent invalid. Thus the petitioner may be any natural persons or legal persons with the qualifications of civil litigation subjects, including patentees.
The object of the Request for Invalidation shall be granted patents, including patents that have been terminated or abandoned (except those abandoned from the date of filing).
The invalidation proceedings are initiated upon the request of the party concerned, and the CNIPA will not initiate the invalidation proceedings initiatively.
Invalidation Grounds
The following grounds can be used to request invalidation against a patent:
1) The technical scheme or design does not conform to the definition of invention, utility model or design under the Patent Law;
2) For an invention or utility model made in the territory of China, no secrecy review is conducted before filing a foreign patent application for such invention or utility model;
3) The invention or utility model to which the patent is granted does not possess novelty, inventiveness or practical applicability;
4) The design to which the patent is granted is a prior design or a conflicting application or lacks obviousness in view of the prior design or combination of prior design features;
5) The design to which the patent is granted conflicts with the legal rights acquired by others before the filing date;
6) The description fails to set forth the invention or utility model in a manner sufficiently clear and complete so as to enable a person skilled in the art to carry it out;
7) The claims are not supported by the description and fail to define the scope of the patent protection sought for in a clear and concise manner;
8) The relevant drawings or photographs submitted do not clearly indicate the design of the product for which patent protection is sought;
9) The amendment to an invention or utility model patent application goes beyond the scope of disclosure recorded in the initial description and claims;
10) The amendment to a design patent application goes beyond the scope of the disclosure as shown in the initial drawings or photographs;
11) The inventions-creation is contrary to laws, social morality or is detrimental to public interests;
12) The acquisition or use of genetic resources on which the invention-creation relies violates the provisions of laws and regulations;
13) It is a non-patentable subject matter (e.g. scientific discoveries, rules and methods for mental activities…);
14) It is a case of double patenting;
15) The principle of good faith was not followed in the patent application; for instance, the patent application is not based on genuine invention-creation activities, and the applicant practices fraud;
16) The independent claims do not outline the technical scheme of the invention or utility mode and lack indispensable technical features necessary for the scheme to solve the technical problem;
17) A divisional application goes beyond the scope recorded in the original application.
Documents Required
To request invalidation against a patent, the following documents shall be prepared:
1) A Request for Invalidation, which shall contain the grounds for invalidation by referring to the evidence, and indicate the evidence on which each ground is based;
2) Evidence proving that the patent should be declared invalid;
3) Certificate of the petitioner; for a Chinese petitioner, a natural person should submit a copy of his/her personal identity card, and a legal person should submit a copy of its business license stamped with its official seal; while for a foreign petitioner, a notarized certificate of incorporation given by the local notary office shall be provided;
4) An original power of attorney sealed or signed by the petitioner.
Invalidation Proceedings
After the petitioner submits the Request for Invalidation and associated documents (collectively referred to as invalidation documents), the CNIPA shall promptly examine such invalidation documents and make a decision, and then notify the petitioner and the patentee.
1) Pretrial Stage
a) For the petitioner:
If the CNIPA, after examination on the request and the related documents filed, finds defects in the invalidation documents, it will issue a Notice to Make Rectification on Invalidation Request to the petitioner and inform him/her/it to make rectification within a specified time limit. And, if the invalidation documents or the rectified invalidation documents comply with relevant regulations, the CNIPA will issue a Notification of Acceptance of Invalidation Request to start the invalidation proceedings.
The petitioner can add invalidation grounds or supplement evidence within one month from the date of filing the invalidation documents.
Invalidation grounds added or evidence supplemented after the expiration of the one-month period will not be considered by the CNIPA, except for the following circumstances: (i) where the patentee amends claims in a manner other than deletion, the petitioner can add invalidation grounds against the amendment in a detailed manner within the specified time limit; (ii) where the invalidation grounds obviously do not match the submitted evidence, the petitioner can change the invalidation grounds.
Before the CNIPA makes a decision on the Request for Invalidation, the petitioner can withdraw the Request.
b) For the patentee:
If the CNIPA, after examination on the request and the related documents filed, finds that the invalidation documents or the rectified invalidation documents comply with the relevant regulations, it will issue a Notification of Acceptance of Invalidation Request and forward a copy of the invalidation documents to the patentee.
For the invalidation documents, the patentee can file an observation and/or amend the claims within the time limit specified by the CNIPA (usually one month). The patentee’s failure to reply will not affect the CNIPA’s examination.
For an invention or utility model patent, the patentee may amend the claims. The amendment shall follow the following principles:
(1) the subject matter of the claims shall not be changed;
(2) the protection scope shall not be expanded as compared with that of the granted patent;
(3) the amendment shall not go beyond the scope of the initial description and claims;
(4) adding technical features not included in the granted claims is generally not allowed.
Subject to the above principles of amendments, the specific manners to amend the claims are generally limited to deletion of a claim, deletion of a technical scheme, further limitation of a claim, and correction of obvious errors.
The patentee of a design patent shall not amend the patent documents.
c) Exchange of subsequent documents:
The CNIPA will forward the petitioner’s supplementary grounds to the patentee and ask him/her/it to make a response within a specified time limit; meanwhile, the CNIPA will forward the patentee's observation and/or amended claims to the petitioner and ask him/her/it to make a response within a specified time limit.
If any party fails to make a response within the time limit, it shall be deemed that the party has learned the facts, grounds and evidence involved in the forwarded documents, and has no objection.
Generally, after 1-2 rounds of exchange of documents, the CNIPA will arrange an oral hearing.
2) Oral hearing
Where the CNIPA holds an oral hearing for the Request for Invalidation, it will issue a Notification of Oral Hearing to the parties concerned, informing them of the date and place of the oral hearing. The parties concerned shall submit an acknowledgement within the time limit specified in the notification to clearly indicate whether to attend the oral hearing.
Where the petitioner fails to submit an acknowledgement of the oral hearing within the specified time limit and does not participate in the oral hearing, the Request for Invalidation shall be deemed as withdrawn, and the invalidation proceedings terminate. Where the patentee does not participate in the oral hearing, the CNIPA will hold the hearing by default.
For each party, the persons who participate in the oral hearing shall be no more than four.
During the oral hearing, the petitioner states the scope of the invalidation request and the grounds thereof at first and briefly states the relevant facts and evidence; then, the patentee makes a response; further, the parties may engage in a debate. During the debate, the Panel may raise questions but shall not express their tendentious opinions or argue with either party. After the parties have completely expressed their opinions, the Panel announces the end of the debate and invites the parties to make final statements.
3) Decision
Generally, the Panel will not conclude the examination decision in the hearing; instead, a decision is issued about 3-4 months after the oral hearing.
There are three types of examination decision for a Request for Invalidation, which are:
(1) declaring the patent invalid in whole.
(2) declaring the patent invalid in part; and
(3) maintaining the validity of the patent.
Remedy
Where the party is not satisfied with the decision declaring the patent invalid (including invalidity in whole or in part) or maintaining the validity of the patent, the party may institute a lawsuit before the Beijing Intellectual Property Court within three months from the date of receipt of the decision. The court shall notify the other party in the invalidation proceedings to participate in the litigation as a third party.
Announcements
If the parties do not institute a lawsuit before the Beijing Intellectual Property Court within three months from the date of receipt of the examination decision or the decision is upheld by an effective judgment of the court, the CNIPA shall register the examination decision and announce it.
If a decision to maintain the validity of the patent is made based on amended claims or a decision to declare the patent invalid in part is made, the amended claims or the partial claims remaining valid shall be announced.
No Retroactive Effect
A patent which has been declared invalid shall be deemed to be non-existent from the beginning.
The decision to declare a patent invalid shall have no retroactive effect on any judgment or mediation decision of patent infringement which has been pronounced and enforced by the people's court, on any decision concerning the handling of a dispute over patent infringement which has been implemented or compulsorily executed, or on any contract of patent license or of assignment of patent which has been performed prior to the declaration of invalidation of the patent. However, the damage caused to other persons due to bad faith on the part of the patentee shall be compensated.
If not returning the monetary damage for patent infringement, the exploitation fees or royalties of the patent or fees for the patent assignment will be obviously contrary to the principle of equity, all or part of such damage, royalties or fees shall be returned.
Other matters
Settlement: In the invalidation proceedings, the parties have the right to settle with the other party on their own. Settlement is a voluntary procedure, but not a mandatory procedure.
Recusal: The parties or other interested parties may request an examiner to recuse if they find that the examiner has certain relationship with the case or the parties that affects the fairness of the examination and trial.
Involving Ownership Dispute: Where a patent at issue in the invalidation proceedings involves a dispute over ownership, a party of the dispute case may request to participate in invalidation proceedings. If requesting to participate in the invalidation proceedings, the party of the dispute case shall file a request for participating with documents certifying that the ownership dispute case has been accepted by the court or the local intellectual property administrative department. In the invalidation proceedings, the party of the dispute case can file his/her/its opinion for the Panel’s reference.
Involving Early Resolution of Drug Patent Disputes: The petitioner shall clearly indicate that the case involves the mechanism for early resolution of drug patent disputes in the Request for Invalidation or shall file relevant evidence showing that the invalidation involves the mechanism for early resolution of drug patent disputes in time.
Official Fee: If the petitioner fails to pay or pay in full the official fee associated with the invalidation within one month from the date of filing the Request for Invalidation, the Request shall be deemed not to have been filed.
Timeframe: The invalidation proceedings, i.e. from the filing of the Request for Invalidation to the issuance of the invalidation decision, generally take 6-10 months; for complex cases, it may take a year or more.
Res judicata: After the examination decision on the Request for Invalidation is made, any new Request for Invalidation of the same patent based on the same ground and evidence shall not be accepted or examined by the CNIPA.
In practice, there are many details that may affect the progress of the invalidation proceedings. If you have any questions or need any assistance, please e-mail to info@afdip.com, or call us at 010-82730790. For litigation/legal matters, please e-mail to info@bhtdlaw.com or call us at +86 (10) 82737958.
