If you want attack the validity of Chinese patent applications after they are granted, you may file a request for patent invalidation with Patent Office. The invalidation system may serve as a good weapon for you if your business is threatened by a granted patent. In this article, we will provide a detailed introduction of the patent invalidation system of China, including its legal basis, invalidation procedure and its outcome.
As prescribed by Article 45 of the Patent Law of China, where, starting from the date of the announcement of the grant of the patent right by the patent administration department under the State Council, any entity or individual considers that the grant of the said patent right is not in conformity with the relevant provisions of this Law, it or he may request the Patent Reexamination Board (PRB) to declare the patent right invalid.
The request for patent invalidation in China shall state in detail the grounds for filing the request. Rule 65(2) of the Implementing Regulations provides a list of grounds on which an invalidation request can be based. Such grounds include issues relating to:
1）The provisions of Articles 22 and 23 of the Patent Law (novelty, inventiveness, practical applicability);
2）The provisions of Item 3 (requirements on the drafting of the specification) and Item 4 (requirements on the drafting to the claims) of Article 26 of the Patent Law;
3）The provision of Article 33 of the Patent Law (amendments shall not go beyond the scope of the original documents);
4）The provision of Article 2 of the Implementing Regulations of the Patent Law (the definitions on invention, utility model and design patents);
5）The provision of Article 9 of the Implementing Regulations of the Patent Law (repeated grant of right);
6）The provisions of Article 5 and 25 of the Patent Law (the scope where no patent right shall be granted);
7）The provision of Article 9 of the Patent Law (patent right shall be granted to the party who is the first to file the application for patent)
Among the various grounds, an attack on the lack of novelty and/or inventiveness during invalidation proceedings probably carries the most weight. The likelihood of a request being accepted by the PRB based on such grounds is substantially higher than if it were based on other grounds.
The examination procedure of a request for patent invalidation is a patent authorization procedure for the re-cognizance of the validity of the accused patent right. It is made by the PRB and based on considering both the observations and evidences submitted by the petitioner and the patentee. The specific workflow is shown as follows:
Examination or Oral Proceedings
In China, the PRB will send a copy of the request for invalidation and relevant documents to the patent owner, and invite the patent owner to respond within a specified time limit, which is usually within a month and not extendible. Depending on the circumstances of the invalidation, the PRB may also transfer to the person requesting the invalidation any observations filed by the patentee in response to the request for invalidation, and when necessary, set a time limit (usually one month) for response. If a party fails to respond within the time limit, the party will be deemed to have known the grounds, facts and evidence contained in the transferred documents and to have raised no opposition.
The patentee is permitted to amend the claims of the patent, provided that such amendment does not broaden the scope of patent protection. If the amendment of the claims is done by means other than deletion, the person requesting the invalidation is given an opportunity to raise new grounds, evidence and observations against the amended claims.
The PRB may, at the request of the parties or at its discretion based on the needs of the case, decide to hold oral hearings during the reexamination process. A party shall submit the request for oral hearing in writing, setting forth the grounds for such request. As already mentioned, the oral hearings shall be conducted publicly, subject to situations where confidentiality is required by law.
Outcomes of the invalidation proceeding
In China, an invalidation proceeding have three possible outcomes:
1) the entire patent is declared invalid;
2) part of the patent is declared invalid;
3) the patent is upheld.
Under the current Patent Law of China, any party not satisfied with the decision of the PRB may, within three months from receipt of the notification of the decision, institute legal proceedings in the Beijing First Intermediate People’s Court.
Frequently Asked Questions
1、Can a requester present evidence in foreign language?
Where the party concerned submits a piece of evidence in a foreign language, he shall also submit the Chinese translation thereof. If he fails to submit the Chinese translation for the evidence within the time limit, the foreign language evidence shall be deemed not to have been submitted.
2、How much and when shall the petitioner pay the fee for a request for invalidation in China?
The petitioner shall pay the fee for a request for invalidation, within one month from the filing date of the request, which for a request for invalidating an invention patent right is 3000 RMB and for a request for invalidating a utility model patent right or a design patent right is 1500 RMB. The fee for a request for invalidation cannot be reduced or postponed.
For more information concerning the fee for a request for invalidation please refer to the following website: https://www.cnipa.gov.cn/col/col1518/index.html.
3、How long does the invalidation proceeding take in China?
The invalidation proceeding generally takes about seven months from request to settlement.