Brief introduction of prioritized examination of patent invalidation proceedings in China

By Yingchun Liu, patent attorney King and Wood Mallesons’ IP group

According to pertinent provisions of the Chinese Patent Law, where any entity or individual thinks the grant of a Chinese patent right fails to comply with provisions since the date of grant and announcement of the patent, it or he may request Reexamination and Invalidation Examination Department of China National Intellectual Property Administration (CNIPA) to declare the patent right invalid.

In recent years, the period from acceptance of an invalidation request by the Reexamination and Invalidation Examination Department to issuance of a decision on examination of the invalidation request continues to be shortened. However, since many patent invalidation cases involve civil infringement litigation proceedings, relevant parties still expect the period to be further shortened. To further improve service quality, on June 27, 2017 CNIPA published Methods for Management of Prioritized Examination of Patent Invalidation Proceedings (the Methods), which become effective on August 1, 2017, wherein contents regarding prioritized examination of invalidation request of patents, utility models and designs were added.

At present, the Methods have already been enforced over two years. Some problems are hereby introduced briefly.

1.Conditions for requesting for prioritized examination of patent invalidation cases

First, attention should be paid to conditions for requesting for prioritized examination of patent invalidation cases. If these conditions are not satisfied, only an ordinary process should be taken. These conditions are summarized and classified into the following classes:

(1) Conditions for case circumstances: (A) a concerned party has already filed a request with a local intellectual property office to handle a subject patent infringement dispute, institute legal proceedings with a people’s court or requested an arbitration mediation organization for arbitration and mediation; (B) or the subject patent is of great significance for the state’s interests or public interests.

(2) Conditions for the requester: (A) concerned parties including both the requester and the patentee may requested for prioritized examination, but where one concerned party includes several entities, consensus must be reached between the entities; (B) the local intellectual property office, people’s court or arbitration mediation organization handling or examining the patent infringement dispute may file a request for prioritized examination in connection with the patent invalidation cases.

(3) Conditions for formalities: (A) where a concerned party files a request for prioritized examination, he should submit the original copy of the request for prioritized examination, and scanned documents of a notification of case establishment, a notification of response, a letter of complaint and a notification of responding to petition regarding a patent infringement dispute, and the request needs to be signed or affixed a seal by the concerned party (where there are several entities, all entities  must sign or affix a seal) and the component authority of the State Council or provincial intellectual property office signs a recommendation; (B) where the local intellectual property office, people’s court or arbitration mediation organization files a request for prioritized examination, it should submit a request for prioritized examination and furnish reasons.

Noticeably, where a concerned party files a request for prioritized examination, the component authority under the State Council or provincial intellectual property office needs to sign a recommendation. This increases an approval formality as well as difficulty. In addition to scanned documents of the notification of case establishment, the notification of response, the letter of complaint and the notification of responding to petition regarding a patent infringement dispute, the requester needs to prepare an individual power of attorney, and remarks on the recommendation signed by the provincial intellectual property office for prioritized examination of the invalidation request case. Certainly, different provincial intellectual property offices might have different requirements. The Author filed requests for prioritized examination of a series of patent invalidation request cases immediately after the Methods were enforced. The first one of said series of patent invalidation request cases met setback at the provincial intellectual property office. In the table of the our request for the first time, since the information about the contact and annexes is filed on the first page, the column for the requester to request for prioritized examination and for the component authority under the State Council or provincial intellectual property office to sign a recommendation has to appear on the second page. The provincial intellectual property office believed that the signature should not have appeared on the second page and rejected the request on account of worry about the content on the first page being tampered. We were permitted after we had to prepare another table again. In fact, if the provincial intellectual property office worries, it surely can sign and affix a seal on the recommendation on the second page of the table and then affix a seal bridging the first and second pages to solve the problem. Such a simple and rude refusal handling manner causes us to have to ask for all entities of the concerned party to sign or affix a seal, which delays the process by several days.

2.Timing for requesting for prioritized examination

Importantly, the timing should be noticed upon filing a request for prioritized examination. If the timing is improper, it is probable not to shorten the patent invalidation request proceeding period, but futile; or even though the CNIPA approves for prioritized examination, the process will get back to the ordinary procedure later because the timing for filing the request is improper.

If the concerned party files the request for prioritized examination as early as possible, this means that the period might be shortened as much as possible. If the request is filed after the collegial panel is established and the oral hearing is issued, the shortened time is not long. The reason is that the date and the court for holding the oral hearing are already determined, if the oral hearing date is altered again, the panel needs to contact the court to alter the date and issue a notification to both concerned parties, and the actual oral hearing date almost meet the originally-scheduled oral hearing date after both parties receive the notification of alteration. Finally, the only step that can be expedited is to offer an oral hearing result as soon as possible after completion of the oral hearing. The overall proceeding period is not reduced too much.

A petitioner for filing the invalidation request may provide supplemental evidences and reasons within one month after the filing of the invalidation request. If the petitioner further needs to furnish supplemental evidences and reasons, he’d better not file the request for prioritized examination first. The reason is that if he furnishes supplemental evidences and reasons after filing the request for prioritized examination, CNIPA may stop the prioritized examination and restore the original procedure. He may prepare the request for prioritized examination and corresponding materials while actively preparing supplemental evidences and reasons, and he may file the request for prioritized examination upon or shortly after furnishing supplemental evidences and reasons.

If the patentee files the request for prioritized examination, he needs to consider in advance the manner of amending claims later. If the patentee amends claims in a manner other than deletion after request for prioritized examination is approved, CNIPA may stop the prioritized examination and restores the ordinary procedure. Hence, the patent has the right to amend claims especially after the CNIPA Order No.74 regarding Decision of CNIPA Regarding Amendments of Patent Examination Guidelines enforced on April 1, 2017. The patentee may amend claims in multiple amendment manners. The patentee must balance several aspects at the outset and find an optimal timing for amending patent documents and filing the request for prioritized examination.

3.Approval of the prioritized examination proceedings of invalidation request

The request for prioritized examination is executed by Case Establishment and Procedure Management Department not by the panel who specifically examines the case. If the materials for requesting the prioritized examination are sufficient and checked without errors, the concerned party filing the request will receive a notification about whether the request is approved about half a month later.

It should be appreciated that the request is not certainly approved even though all documents are furnished and the request is filed. As well known, since the awareness of patent protection enhances, patent infringement cases increase annually and the patent infringement cases accepted by CNIPA also increase substantially. Without affecting normal examination of a lot of ordinary proceedings of CNIPA, CNIPA will determine whether to approve the requested prioritized examination according to situations such as examination capability of different technical fields, and issue a notification of offering prioritized examination of the invalidation request proceedings. Hence, whether the request is approved depends on the number of cases of CNIPA at that time.

In addition, if the case is very complicated, it is less likely for CNIPA to approve the request for prioritized examination. Even though the request is approved, during subsequent examination, the panel believes the case belongs to a difficult case because the sum of object of civil proceedings involved by the subject patent is very large, and upon CNIPA’a approval, stops the prioritized examination proceedings and restore the ordinary proceedings and issues a notification of stopping prioritized examination of the invalidation request proceedings, just as in the author’s first case for which the request for prioritized examination was approved. However, it might be possible to actively attempt to expedite the proceedings for such invalidation request cases.

4.Period for examining prioritized invalidation request cases

The request for prioritized examination is filed to expedite the examination period. Pursuant to the Methods, where CNIPA issues a notification of offering prioritized examination, the patent invalidation request cases of patents and utility models will be closed in five months since the date of issuance of the notification, and the invalidation request cases of designs will be closed in four months. The examination period of prioritized patent invalidation request cases handled by the Author are substantially shortened indeed.