The Supreme People’s Court clarified in an appellate case involving an administrative dispute over the invalidation of a utility model patent that the legal status of a determined invalidation has retroactive effect, which can render the review objects of other requests for invalidation targeting the same patent non-existent. The case overview is as follows:
Company A is the patent holder, while Companies B and C filed request for invalidation against Company A’s utility model, respectively.
Regarding the request for invalidation filed by Company B, the China National Intellectual Property Administration (CNIPA) first issued an Examination Decision on Invalidation (Invalidation Decision 1), declaring claims 2-6 invalid and maintaining the validity of the patent based on claim 1. Company B, dissatisfied with Invalidation Decision 1, filed a lawsuit, and the court of first instance dismissed Company B’s claims. Company B then appealed to the Supreme People’s Court, which ruled to revoke the first-instance judgment and Invalidation Decision 1. Subsequently, the CNIPA, in accordance with the judgment of Supreme People’s Court, issued a new invalidation decision (Invalidation Decision 3), declaring the entire patent invalid.
Regarding the request for invalidation filed by Company C, the CNIPA later issued an Examination Decision on Invalidation (Invalidation Decision 2), declaring claim 1 invalid and maintaining the validity of the patent based on claims 2-6.
Company A, dissatisfied with Invalidation Decision 2, filed a lawsuit, and the court of first instance dismissed Company A’s claims. Company A then appealed to the Supreme People’s Court. The Supreme Court found that during the appeal period, the CNIPA had issued Invalidation Decision 3, declaring the entire patent invalid, and this legal status of invalidation had been established. Consequently, claim 1 that Company C sought to declare invalid no longer existed, and thus, the appealed Invalidation Decision 2 and the first-instance judgment should be revoked. Based on this, the Supreme Court ruled to revoke the first-instance judgment and Invalidation Decision 2.
The Supreme People’s Court pointed out in its judgment that the legal status of a determined invalidation has retroactive effect, which can render the review objects of other requests of invalidation targeting the same patent non-existent. In the trial of administrative disputes over patent invalidation, if a party can provide evidence proving that the same patent targeted by the appealed Examination Decision on Request for Invalidation has been declared invalid in other invalidation procedures and this legal status of invalidation has been established, then the appealed Examination Decision on Request for Invalidation should be revoked because the subject for review no longer exists.
(2023) Zui Gao Fa Zhi Xing Zhong No. 1255
If you have any question about the protection of intellectual property rights, please feel free to send us emails. For patent-related matters, please send to info@afdip.com. For trademark/litigation/legal matters, please send to info@bhtdlaw.com.
