In an administrative appeal case, the Supreme People’s Court pointed out: When, during the oral proceedings for patent invalidation examination, the China National Intellectual Property Administration (CNIPA) deems that some amended claims cannot be accepted, it should grant the patentee the right to choose the basis for examination. Specifically, the patentee may either select the previously acceptable version of claims as the basis for examination, or choose to delete the unacceptable claims from the current claims text and use only the remaining acceptable claims as the basis for examination. If the patentee chooses to delete the unacceptable claims from the current claims text, the CNIPA should generally accept such deletion, regardless of whether it is proposed orally by the patentee during the oral proceedings or submitted in writing.
This case relates to an Examination Decision on Request for Invalidation. The case is briefly summarized as follows:
Company A is the patentee of the patent in dispute. Company B filed a request for invalidation against this patent. In response to Company B’s request for invalidation, Company A submitted observations on October 9, 2017, along with a complete replacement sheets of the claims. Subsequently, during the oral proceedings, the CNIPA informed both parties on the spot that the claims submitted by Company A on October 9, 2017, did not comply with the provisions of the Guidelines for Patent Examination regarding amendments during the invalidation stage. Company A then stated during the proceedings that it would waive claims 6, 7, and 24 from the claims submitted on October 9, 2017. In response, CNIPA refused to accept this waiver on the spot and announced that this case involving the invalidation request would proceed with the text of announcement of grant as the basis for examination. Both parties agreed to proceed with the oral proceedings based on this text, though Company A reserved its opinion. Later, CNIPA, using the text of announcement of grant as the basis for examination, issued the contested decision, concluding that this patent did not possess novelty and/or inventive and declaring the entire patent invalid.
Company A, dissatisfied with the decision, filed a lawsuit with the court of first instance, requesting the revocation of the contested decision and an order directing the CNIPA to issue a new decision.
The court of first instance issued an administrative judgment dismissing Company A’s claims. In its judgment, the court of first instance held that Company A should submit replacement sheets in the prescribed format. Although, in accordance with the provisions of the Guidelines for Patent Examination, a patentee may, during oral proceedings, declare narrowing down the protective scope of the patent or waiving certain claims, and may delete claims or technical schemes included therein before the CNIPA issues its examination decision. However, regardless of whether the patentee restricts, deletes, or waives claims through a declaration or amendment, the corresponding replacement sheets should be submitted, or a complete patent document can be derived from the existing case records. Although Company A declared deletion during the oral proceedings, it failed to submit replacement sheets for this between the oral proceedings and the issuance of the contested decision. Therefore, CNIPA’s refusal to acknowledge and examine was proper.
Company A, dissatisfied with the decision, filed an appeal.
The Supreme People’s Court issued a final judgment: revoking the first-instance judgment and the contested decision, and ordering the CNIPA to issue a new examination decision in response to the request for invalidation filed by Company B.
The effective judgment of the second-instance court held that: the primary dispute in this case centers on whether a patentee’s oral request, made during oral proceedings for invalidation examination, to delete claims rejected by CNIPA should be procedurally permitted. This issue can be analyzed from the perspectives of institutional considerations for restrictions on claim-deletion amendments and the interpretation and application of relevant procedural rules.
I. Institutional Considerations for Restrictions on Claim-Deletion Amendments
1.1 Institutional Considerations for Restrictions on Claim Amendments
The primary significance of the claim amendment system in invalidation proceedings is to permit amendments. By allowing amendments, it ensures that the invention and creation having technical contributions are not denied protection solely due to poorly drafted claims, thereby achieving the institutional goals of safeguarding the legitimate rights and interests of patentees and providing substantive incentives for innovation. Certainly, the claim amendment system in invalidation proceedings must also include restrictive requirements concerning the manner and timing of amendments. However, such restrictions on amendments are not the primary focus of the claim amendment system but rather a means of balancing interests built upon the foundation of permissible amendments. The purpose of these restrictions is to prevent significant harm to public reliance interests and excessive delays in administrative examination efficiency. For this reason, restrictions on claim amendments must be strictly necessary.
There is particular needs for caution when imposing additional restrictions beyond those explicitly stipulated by laws and administrative regulations, especially when, there is no possibility of harm to public reliance interest or decreasing administrative examination efficiency—that is, when there is no gain or loss of interests that need to be balanced, the restrictions themselves become unnecessary. Similarly, restrictions on claim amendments must be proportionate and should not exceed the reasonable scope required for balancing interests. The impairment of benefits suffered by patentees due to such restrictions should not be disproportionate to the improvements in public reliance interests and administrative efficiency. Particularly, when restrictions render it substantially difficult for patentees to amend their claims, while the improvements in public interest and administrative efficiency brought about by the restrictions are marginal, the restrictions may exceed necessary limits. Both imposing restrictions on claim amendments without demonstrated necessity and exceeding necessary limits in imposing such restrictions may violate the fundamental requirement that restrictions—as tools for balancing interests—must not unreasonably infringe upon the legitimate rights and interests of patentees.
1.2 Institutional Considerations for Restrictions on Claim-Deletion Amendments in Invalidation Proceedings
The Guidelines for Patent Examination explicitly enumerate the permissible manners for amending claims in invalidation proceedings, among which deletion-based amendments occupy a unique position. Deleting a claim or technical scheme signifies the patentees’ voluntary abandonment of the originally granted rights and acknowledgment of the technical scheme’s entry into the public domain, thereby enhancing public interests. Such deletions also typically reduce the number of subjects to be reviewed in invalidation proceedings, improving administrative efficiency. Generally, there is no special balance of interests to be weighed for deletion-based amendments to claims, and imposing restrictions on such deletions is unnecessary. Restricting such deletion-based amendments would:
(1) Undermine the patentees’ procedural interests in amending claims and substantive interests in maintaining patent validity through such amendments;
(2) Diminish the determined potential gains in public interest;
(3) Fail to improve, or at least not significantly enhance, administrative efficiency.
Therefore, deletion-claim amendments should not be restricted in principle. If restrictions are deemed necessary, they must be imposed with caution, requiring thorough deliberation on the sufficiency of necessity and precise calibration of the restriction’s scope.
II. Interpretation and Application of Procedural Restrictions on Deletion-Based Amendments
2.1 Restrictions on the Proposal Method for Deletion-Based Amendments—Whether Only Submission of Replacement Sheets Holds Legal Significance
In this case, the CNIPA, citing Rule 52 and Rule 61(2) of the Implementing Regulations of the Patent Law, argued that only submission of replacement sheets holds legal significance, and that accepting oral requests to delete unaccepted claims lacks a legal basis. The following analysis is provided in response:
The aforementioned provisions in the Implementing Regulations of the Patent Law are specifically tailored to the patent grant proceedings. However, regardless of whether in grant or invalidation proceedings, clearly establishing the basis for examination is a self-evident prerequisite for advancing the examination. Therefore, the requirements for submitting replacement sheets should also be observed in invalidation proceedings. Notably, these provisions implicitly distinguish between amendment proposals and replacement sheets. Generally, an amendment proposal explains the manner and content of amendments, clarifying distinctions between the replacement sheets and the original text undergoing amendment, as well as the manner of amendments and so on. In contrast, a replacement sheet serves as the confirmed outcome of such amendments—that is, the result of the amendments. These two elements are mutually complementary but emphasize different aspects. Consequently, “written clarity” through submission of replacement sheets is not the sole means of establishing the examination basis. “Conceptual clarity” based on a shared understanding of the amendment proposals can likewise promptly define the examination basis and effectively advance the examination. Thus, the requirement to “submit replacement sheets in accordance with regulations” does not imply that amendment proposals unaccompanied by replacement sheets automatically lack legal significance, nor does it imply that replacement sheets must be submitted concurrently with amendment proposals. In principle, as long as a clear intent to amend is expressly communicated to the CNIPA during normal proceedings—whether through an oral request alone, a written amendment proposal paired with a separately submitted replacement sheet, or a combined submission of both—the expression of intent will constitute a legally valid amendment, provided it is unambiguous, specific, and reaches the CNIPA within the prescribed time limit. Of course, in cases where amendment proposals are submitted independently, the patentees are legally obligated to promptly furnish replacement sheets unless the CNIPA has explicitly rejected the amendment proposals.
Deletion-based amendments are made on the basis of the existing claims text serving as the subject of amendment. Generally, patentees, petitioners for invalidation, and the examination panel of the CNIPA can easily reach a clear and consistent understanding of the examination basis. Therefore, deletion-based amendments are typically the simplest form of amendment, and the effective advancement of examination is usually not hindered by the absence of replacement sheets. In examination practice, it is not uncommon to allow the submission of written deletion proposals in advance or the oral proposal of claim deletion amendments during oral proceedings, with the examination proceeding based on the claims resulting from such deletion-based amendments, while ordering the patentees to promptly submit replacement sheets thereafter. Similar to how parties in litigation proceedings may adjust their litigation strategies or even abandon certain substantive or procedural rights in response to evolving arguments and evidence presented at different stages, in patent invalidation proceedings, patentees may also appropriately narrow down the scope of their requested protection as examination progresses to maximize the likelihood of maintaining patent validity. This approach aligns with examination principles and facilitates the fair and reasonable protection of valuable invention and creation. When the advancement of examination is not substantially affected and examination practice permits the use of a text resulting from the patentees’ oral declarations of claim deletions during oral proceedings as the examination basis, it is inappropriate to reject deletion-based amendments solely on the grounds that replacement sheets were not submitted in advance or in writing on the spot. In fact, insisting rigidly on the prior submission of replacement sheets before proceeding with examination—when a “conceptually clear” examination basis has already been established—may unduly prolong proceedings. Even worse, denying the patentees an opportunity to submit replacement sheets and immediately deeming the amendments have not been submitted merely due to the absence of replacement sheet would not facilitate fair and reasonable protection of the patentees’ rights.
2.2 Timing for Proposing Deletion-Based Amendments
The Guidelines for Patent Examination serve as both a guiding framework for patentees and petitioners for invalidation participating in patent examination and a binding constraint on the CNIPA in fulfilling its patent examination duties. According to Section 4.6.3 “Restrictions to Manners of Amendments” under Chapter 3 “Examination of Requests for Invalidation” in Part IV “Examination of Requests for Reexamination and for Invalidation” of the Guidelines for Patent Examination: “Before the Patent Reexamination Board makes a decision on the request for invalidation, the patentee may either delete a claim or de¬lete a technical scheme contained in a claim. The patentee may amend the claims in ways other than deletion within the time limit for response only in one of the following circum¬stances: (1) in response to the request for invalidation; (2) in response to causes for invalidation or evidence added by the petitioner; (3) in response to causes for invalidation or evidence not men¬tioned by the petitioner but introduced by the Patent Reexamination Board.” This demonstrates that, unlike other amendment manners, deletion-based amendments are neither required to be so-called “responsive amendments” nor subject to explicit response deadline restrictions. Patentees may propose deletion-based amendment targeting any claim or technical scheme at any non-obviously unreasonable time prior to the issuance of the examination decision.
Proposing deletion-based amendments during oral proceedings does not violate the aforementioned timing requirements. This is further corroborated by the provisions in Section 5.3 “The Third Stage of Oral Proceedings” under Chapter 4 “Provisions Concerning Oral Proceedings in the Reexamination and Invalidation Procedure” in Part IV “Examination of Requests for Reexamination and for Invalidation” of the Guidelines for Patent Examination: “After the parties have completely submitted their observations, the leader of the hearing panel announces the end of the debate, and invites the parties to make their final statements. In making the final statements … patentee … declare to narrow down the scope of patent protection or renounce part of the claims.”
Overall, the procedural requirements for deletion-based amendments should be relatively lenient compared to other amendment manners: they may be proposed either through written submission of amendment proposals or via oral declarations during oral proceedings; the complete text of the claims after the deletion-based amendments may be submitted in the form of replacement sheets together with the amendment proposals, or the amendment proposals may be submitted first followed by subsequent submission of replacement sheets, or replacement sheets may be submitted initially with amendment intentions clarified as needed later; and such amendments may be proposed at any non-obviously unreasonable time prior to the issuance of the examination decision. Furthermore, given that deletion-based amendments do not raise issues of “amendment go-beyond the scope,” meaning they neither result in the amended text going beyond the scope recorded in the original patent documents nor expand the protective scope of the original patent claims; and considering that deletion-based amendments are not subject to the so-called “responsive amendment” limitation, the deleted content is not confined to matters related to the request for invalidation and its grounds; generally speaking, as long as deletion-based amendments meet the aforementioned procedural requirements, they should be accepted upon proposal.
In the context of patent invalidation examination proceedings, when the CNIPA, during oral proceedings, informs the patentees on the spot that certain claims in the amended current version of the claims are acceptable while others are not, whether the patentees are permitted to orally declare the deletion of the unacceptable claims has significant implications for the patentees’ interests, i.e., the maintenance of patent validity. If deletion is allowed, the patentees can retain the aforementioned acceptable amendments; if not, due to the constraints of amendment deadlines, the patentees typically cannot preserve the otherwise acceptable amendments and must revert to the last acceptable version or even the text of announcement of grant. Refusing to accept such oral declarations of deletion may effectively result in the forfeiture of all amendment opportunities and could even lead to the complete invalidation of a patent that could otherwise have been partially maintained valid or could have been maintained valid after appropriate deletion-based amendments.
Through the aforementioned judgment, the Supreme People’s Court has clarified the principles for handling the deletion of certain claims during oral proceedings of request for invalidation: amendments wherein the patentees elect to delete unacceptable claims from the current claims should be accepted.
(2022) Zui Gao Fa Zhi Xing Zhong No. 870
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