Invalidation
Procedure for a Chinese Patent
Introduction
At any time
after a Chinese Patent has been granted, any person may
file a request for invalidation to the Patent
Re-examination Board (PRB). The PRB is independent from
the Chinese Patent Office and is recognized as giving
professional unbiased decisions.
Request for
Invalidation
The Request must
clearly state the grounds on which it is based, and
identify the evidence supporting these grounds. A Power
of Attorney and two copies of the supporting evidence
must accompany the Request. The Request will not be
accepted if it is based on the same reasons and evidence
of a previous decision of the PRB.
Grounds
of Invalidation for Invention Patent or Utility Model
There are a
large number of grounds of invalidation. In contrast to
many other patent systems, the claims lacking clarity or
being indefinite is a ground of invalidation. The
grounds for an invention patent or a utility model are:-
1.
The patent lacks novelty, inventive step or
practical applicability (Article 22 of the Chinese
patent law)
2.
The description is insufficiently clear and
complete to enable a skilled person to carry out the
invention (Article 26.3)
3.
The claims are not supported by the description
(Article 26.4)
4.
An amendment made to the patent specification
extends beyond the original disclosure of the
application as filed (Article 33)
5.
For an invention patent, the claimed invention is
not a technical solution relating to a product, process
or improvement thereof; for a utility model, the claimed
invention is not a new technical solution relating to
the shape and/or structure of a product, which is fit
for practical use (Rule 2)
6.
More than one patent right has been granted for
the same invention
(Rule 13)
7.
The claims are not clear and concise or do not
define the invention in terms of its technical features
(Rule 20.1)
8.
An independent claim lacks essential technical
features (Rule 21.2)
9.
The invention is contrary to laws of the State,
social morality or detrimental to public interest
(Article 5)
10.
The invention relates to unpatentable subject
matter (scientific discovery, rules and methods for
mental activities, methods for the diagnosis or for the
treatment of diseases, animal or plant varieties,
substances obtained by means of nuclear transformation)
(Article 25)
11.
The patent was not granted to the first person to
file an application for protection for the invention
(Article 9)
The grounds of
invalidation for a design patent are different and
listed on a separate sheet.
Summary
of Procedure
1.
The petitioner submits a Request for
Invalidation.
2.
The PRB checks whether the Request for
Invalidation complies with the formal requirements and
sets a time limit for the petitioner to rectify any
deficiencies if it does not.
3.
The petitioner for invalidation is allowed to
submit further reasons and evidence within 1 month from
the date of submission of Request. While it is possible
for the petitioner to submit further reasons and
evidence after this deadline, the PRB does not have to
consider such late filed evidence.
4.
Once the Request has been accepted, the PRB
forwards the Request for Invalidation to the Patentee
and sets a time limit for submitting comments and/or
amendments. This is usually 45 days from the date on
which the Request for Invalidation was accepted.
5.
A panel consisting of 3 examiners is then
designated for the invalidation case. For a complicated
case the panel may consist of 5 examiners.
6.
The PRB may send further notifications and set
time limits for submission of further comments and
observations by both parties.
7.
Oral Proceedings are called in most, but not all,
cases.
8.
Decision of the PRB issues, usually 3 weeks or so
after the Oral Proceedings, but occasionally at the
hearing itself.
None of
the time limits in the invalidation procedure can be
extended.
It typically
takes the PRB one year to reach a decision.
Translations,
notarization and legalization of Evidence
Evidence in a
foreign language must be translated into Chinese. Any
non-patent document originating outside China should
also be legalized and notarized. Wherever possible these
should be obtained before submitting the evidence. While
it should be possible to file translations, legalization
etc later, this cannot be guaranteed. It is suggested to
submit these documents, in any case, not later than the
date of the oral hearing.
Amendments
to the Patent
Opportunities
for amendment during Invalidation proceedings are
extremely limited. Although the law provides that the
claims can be amended as long as their scope is not
broadened, the established practice of the PRB is to
allow only three types of amendment: combination of
existing granted claims, deletion of a granted claim, or
deletion of an alternative in a granted claim.
Thus it is not
possible for the patentee to introduce a feature from
the description into the claims. Furthermore, after the
time limit for replying to the Request for Invalidation,
or after the time limit for responding to new grounds or
evidence (if any are filed), amendment is restricted to
deletion of claims or deletion of alternatives within a
claim.
The
description of an invention or utility model patent may
not be amended. A design patent may not be amended at
all.
Main
and Auxiliary Requests
Unlike
Opposition proceedings at the European Patent Office, it
is not possible to file a Main Request and several
Auxiliary Requests to be considered if the Main Request
is refused. Such requests are in fact unnecessary in
China, because the PRB considers the validity of all of
the dependent claims, as well as the independent claims.
It is therefore possible for the patent to be found
partially valid, i.e. for some of the claims to be found
valid while others are found invalid.
Oral
Proceedings
Oral Proceedings
are called in most, but not all, cases. Once it has been
decided to hold Oral Proceedings for a case, the PRB
will issue a notification to inform both parties of the
time and place of the oral hearing. If a petitioner
neither makes a written reply to the notification nor
attends the oral hearing, the invalidation case will be
deemed withdrawn and thus the invalidation procedure
will be ended.
Oral
Proceedings are similar to court sessions, including
questioning of evidence, identifying facts, and debate
by the two parties. It is possible to submit further
written comments within 3 days or so after the Oral
Proceedings with agreement of the panel. Usually the
decision is issued in writing about 3 weeks after the
Oral Proceedings.
Decision
of the Patent Re-examination Board
The PRB issues a
decision stating that
i) the
entire patent valid
ii) the entire
patent is invalid
or
iii) part of the
patent is invalid.
Appeal
An appeal
to the 1st Intermediate Court of Beijing can
be lodged within 3 months of written notification of the
PRB¨s decision.
The PRB
will appear at the court as a defendant and the other
party is invited to join the lawsuit as the third
person. It will take the court about 6 months to reach a
trial judgment, which may sustain or overturn the
invalidation by the PRB.
If any party
(including the PRB and both parties) is not satisfied
with the trial judgment, he/she is entitled to appear at
the High Court of Beijing. It will take the court about
6 months to reach the appeal judgment. The appeal
judgment is final.
Effect
of Invalidation
Any patent right
that is declared invalid is deemed never to have
existed. If only part of the patent is declared invalid,
then that part is deemed never to have existed; the
valid part is unaffected and deemed always to have
existed.
Although an
invalid patent or invalid part of a patent is deemed
never to have existed, this does not have retroactive
effect on any judgment or ruling of patent infringement
that has been pronounced and enforced by the People¨s
Court, or any other decision concerning handling of a
dispute over patent infringement. There is also no
retroactive effect for any judgment involving a patent
license or the assignment of a patent right.
If the patent
right is deemed invalid and damages have been caused to
other persons as a result of bad faith on the part of
the patentee, then the patentee must compensate these
damages. For example, if it is shown that the patentee
knew that the patent was invalid, then any license fees,
assignment fees or litigation costs incurred by third
parties must be compensated in whole or in part.
Stay
of Infringement
Proceedings
Chinese courts
try infringement and validity separately. It is common
for the defendant to file a Request for Invalidation to
the PRB in response to an infringement action. It
depends on the court whether the infringement
proceedings are then stayed until the validity of the
patent has been determined (by the PRB or a court on
appeal). Usually, the infringement proceedings for a
utility model or design patent right will be stayed.
Withdrawal
of Request for Invalidation
If the
petitioner withdraws their request for invalidation then
the proceedings are ended. The PRB will not continue to
examine the case of its own motion. Such withdrawal is
often requested if the two parties have reached a
settlement.
Grounds of
Invalidation for Design Patent
The grounds for
a design patent are different and are as follows:-
1.
The patented design is identical or similar to a
design, which was published (anywhere in the world), or
publicly used (in China) before the design patent¨s
filing or priority date. (Article 23 of the Chinese
Patent law)
2.
The design patent is in conflict with an earlier
right (e.g. a trademark, copyright) belonging to another
person. A copy of an effective ruling or judgment
proving the conflict must be submitted with the Request
for Invalidation. (Article 23)
3.
An amendment made to the design patent goes
beyond the disclosure of the originally filed
photographs or drawings. (Article 33)
4.
The design patent is not a new design of the
shape and/or pattern, or color, shape and/or pattern of
a product, which creates an aesthetic feeling and is fit
for industrial application. (Rule 2)
5.
The patented design is contrary to the laws of
the State, or social morality or is detrimental to the
public interest. (Article 5)
6.
The design patent was not granted to the first
person to file an application for protection for the
design. (Article 9)
7.
More than one patent right has been granted for
the same design. (Rule 13.1)
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