The Supreme People's Court ruled on an appeal case involving a Notification that Divisional Application Deemed Not to Have Been Filed and an administrative reconsideration, in which the Court clearly identified the examination subject in administrative reconsideration cases, and further clarified how administrative authorities should determine the appropriate handling method when a patent divisional application does not meet legal requirements.
On March 7, 2020, Company A filed a utility model patent application with the CNIPA. Subsequently, on October 11, 2020, Company A filed a divisional application based on the original application. On March 22, 2021, CNIPA issued a Notification that Divisional Application Deemed Not to Have Been Filed, citing non-compliance with Rule 42 of the Implementing Regulations of the Patent Law as the basis for rejection. Company A contested the Notification and filed an application for administrative reconsideration with the CNIPA. Following review, the CNIPA upheld its original position, concluding that the specific embodiments in both the original and divisional applications were substantively identical, and the distinctions between their claims represented conventional technical means within the field. Dissatisfied with the reconsideration decision, Company A filed an administrative lawsuit with the court of first instance.
The court of first instance held that since the specific embodiments of the original application and the divisional application were identical, and the distinctions in their claims merely constituted common technical means in the field, the divisional application and the original application did not present two or more independent and distinct invention-creations. Consequently, the divisional application did not meet the statutory requirements for division, and both the Notification that Divisional Application Deemed Not to Have Been Filed and the reconsideration decision were legally valid. Furthermore, the Notification in this case did not amount to a substantive rejection due to non-compliance with grant conditions and therefore did not trigger the hearing principle under the Patent Examination Guidelines. Additionally, because the deficiencies in the divisional application could not be overcome through rectification, the CNIPA’s issuance of the Notification under the principle of procedural efficiency—to ensure timely examination—was procedurally appropriate. Accordingly, the court dismissed Company A’s claims. Company A, dissatisfied with the first-instance judgment, filed an appeal.
The Supreme People’s Court, in its second-instance ruling, held: Under Rule 42(1) and (2) of the Implementing Regulations of the Patent Law, if a patent application includes two or more inventions, utility models, or designs, the applicant may file a divisional application with the patent administrative department before the expiration of the stipulated time limit. If the patent administrative department finds that a patent application is not in conformity with the provisions of Article 31 of the Patent Law or Rules 34 or 35 of its Implementing Regulations, it shall invite the applicant to amend the application within a specified time limit; if the applicant fails to make any response after the expiration of the specified time limit, the application shall be deemed to have been withdrawn. According to the examination rules of the divisional application in Patent Examination Guidelines, if a divisional application fails to meet formal legal requirements, it should be handled by issuing a Notification that Divisional Application Deemed Not to Have Been Filed or a Notification that Divisional Application Deemed to Have Been Withdrawal. Where a divisional application is found non-compliant with the provisions of either Rule 42 or Rule 43 of the Implementing Regulations of the Patent Law, it should be handled following the rejection procedures. Under the hearing principle, before issuing a Decision of Rejection, the examiner must notify the applicant of the facts, reasons, and evidence supporting the rejection, providing at least one opportunity to present arguments and/or amend the application. Based on these provisions, in this case, since the CNIPA determined that the divisional application did not meet the provisions of Rule 42 of the Implementing Regulations, it should have rejected the application and allowed the applicant to present arguments and/or amend the claims. Instead, the CNIPA directly issued a Notification that Divisional Application Deemed Not to Have Been Filed, which does not comply with the above rules.
Regarding whether the principle of procedural efficiency could justify issuing the Notification, the Supreme People’s Court held: First, under the Implementing Regulations of the Patent Law and the Patent Examination Guidelines, there is no discretion in selecting handling methods—only strict adherence to the prescribed procedures based on the application’s circumstances. Second, the principle of procedural efficiency, as defined in the Patent Examination Guidelines, requires examiners to improve efficiency and shorten the review process where compliant with regulations. In this case, issuing the Notification might have improved efficiency but deprived the applicant of the right to present arguments and amend claims, violating both the law and the true intent of procedural efficiency.
This case’s emphasis on procedural propriety helps better protect the legitimate rights and interests of patent applicants.
(2023) Zui Gao Fa Zhi Xing Zhong No. 382
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