In China, the validity of the granted patent can be challenged by anyone at any time after the patent is granted, by filing an invalidation request before the Patent Reexamination Board (PRB). The followings are guide to Chinese patent invalidation.
I. Related Provisions of Law and Regulations
Article 45 of the Chinese Patent Law stipulates: "Where, from the date of the announcement of the grant of the patent right by the Patent Office, 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 to declare the patent right invalid."
According to the provision of Rule 65 of the Implementing Regulations of the Chinese Patent Law, for patent right that has been granted by the Chinese Patent Office, the grounds for raising the request for declaring invalidation thereof are directed at the invention-creation that has been granted patent right but is not in conformity with:
1. The provision of Article 2 of the Patent Law (the definitions on invention, utility model and design patents);
2. The provision of Item 1 of Article 20 of the Patent Law (requirements on foreign filing license);
3. The provisions of Articles 22 and 23 of the Patent Law (novelty, inventiveness, practical applicability);
4. 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;
5. The provision of Item 2 of Article 27 of the Patent Law (requirements on the clarity of the design);
6. The provisions of Article 33 of the Patent Law and Item 1 of Rule 43 of the Implementing Regulations of the Patent Law (amendments shall not go beyond the scope of the original documents);
7. The provision Item 2 of Rule 20 of the Implementing Regulations of the Patent Law (requirements on indispensable features for realizing the invention creation);
8. The provisions of Article 5 and 25 of the Patent Law (requirements on eligible subject matters);
9. 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).
II. Forms and Documents
(1) Request Form
Where the petitioner for the invalidation of patent right requests the declaration of the invalidation or partial invalidation of a patent right, he shall submit to the Patent Reexamination Board a "Request for the Declaration of the Invalidation of Patent Right", stating the grounds, together with relevant supporting materials and a statement re the facts on which the grounds are based.
(2) Power of Attorney (PoA)
To represent our client to file the request for invalidation, we shall submit the PoA along with the request form or within the required time limit after receiving a Notice to File the PoA.
According to the current practice of the PRB, the PoA shall be notarized and legalized.
(3) Supplementary Submissions (Optional)
Within a month after filing the request for invalidation, the petitioner may optionally file a supplementary submission to state new grounds and submit new exhibits.
(1) Power of Attorney (PoA)
To represent our client to defend the patent at issued, we shall submit the PoA along with the request form or within the required time limit after receiving a Notice to File the PoA. The PoA shall be notarized and legalized.
The patentee may choose whether to authorize the attorney the right to amend the claims or not, which right in some cases may be critical.
III. Timeline to Go Through the Invalidation
Before the Patent Reexamination Board makes the decision, the invalidation procedure may have several stages.
1. File the Request (for Petitioner)
As mentioned, to initial the invalidation of patent right, the petitioner shall submit to the Patent Reexamination Board a "Request for the Declaration of the Invalidation of Patent Right".
In the case there is an infringement proceeding related to the patent at issue, the request may accompany with the court indictment, such that the petitioner may receive a Notice of Acceptance of the Invalidation Request at the very same day when filing the request.
2. File the Supplementary Submissions (for Petitioner)
Within a month after filing the request for invalidation, as mentioned, the petitioner may optionally file a supplementary submission to state new grounds and submit new exhibits. This may be particularly advantageous where the petitioner was not well prepared when receiving a court indictment of an infringement proceeding.
3. Make Response to Petitioner’s Submissions (for Patentee)
The patentee may, within a month after receiving the Notice of Transferring the Documents, make response to the petitioner’s submissions, such as the grounds stated in the invalidation request.
Generally speaking, if the petitioner files no supplementary submission, there is only one such a notice of transfer.
The patentee response is not obligated, but he/it may state his/its arguments during the oral hearing. However, it is recommended the patentee file the arguments such that the panel may learn the patent from either side equally.
4. Oral Hearing (Both Parties)
The PRB will issue a Notice to Attend the Oral Hearing together with other notice or separately, indicating the time the location of the oral hearing.
During the oral hearing, the panel of the PRB will hear the arguments of both petitioner and patentee.
In practice, only after the oral hearing will the Reexamination Decision be made by the panel of the PRB.
The Decision is appealable before the Beijing Intellectual Property Court within three months from the receipt date of the decision.