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Chinese Practice: patent invalidation proceedings

Lamia XU | Jul 30, 2020

When a foreign company/individual is involved in patent invalidation proceedings, either as a petitioner or a patentee, the below Q&As may be helpful.

Q1: What is the object of a request for invalidation?
A1: A granted patent, which can even be an expired patent or a renounced patent (not a patent renounced from the date of application), can be the object of a request for invalidation[1].

Q2: Who can file a request for invalidation?
A2: Anyone, with or without interest relationship, can file a request for invalidation[2].

Q3: How long does the patent invalidation proceeding last?
A3: Usually, a decision will be issued in 6-9 months after the invalidation request is filed.

Q4: What documents are required?
A4:
1.If you are the representative of a company:
a)Power of Attorney;
b)Copy of Business Certificate/Article of Incorporation/Certificate of Incorporation;
c)Certificate of Authorized Executor;
d)Copy of passport of the Authorized Executor;
2.If you are an individual:
a)Power of Attorney;
b)Copy of passport.

Q5: What is the procedure of the patent invalidation proceedings?
A5:
1. The petitioner files a request for invalidation.
2. The Patent Reexamination Board (PRB) issues a filing receipt in 2-4 weeks after the request is filed and notifies the patentee accordingly.
3. The patentee can submit an observation to the invalidation request in one month after receiving the filing receipt.
4. The petitioner can submit supplemental arguments in one month after filing of the invalidation request[3].
5. The PRB notifies the patentee with the supplemental arguments and the patentee can submit the second observation in one month after receiving the notice.
6. The PRB notifies the petitioner with the patentee’s observation. The petitioner can submit a written observation or wait for presenting its or his observation at the oral hearing.
7. The PRB issues the Notice of Oral Hearing, notifying the date and time of the oral hearing[4].
8. Attorneys attend the oral hearing held by the PRB.
9. Both the patentee and the petitioner can submit written comments soon (usually in one week) after the oral hearing.
10. The PRB issues a decision on the invalidation request in 1-2 months after the oral hearing.

Legal basis:

[1] Guideline for Examination, Part IV, Chapter 3 (3.1): The object of a request for Invalidation shall be the granted patent. It can even be an expired patent or a renounced patent, but not a patent renounced from the date of application.

[2] Chinese Patent Law, Article 45: Where, starting from the date of 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 to declare the patent right invalid.

[3] Rules for the Implementation of the Patent Law, Rule 67: After a request for invalidation is accepted by the Patent Reexamination Board, the person making the request may add reasons or supplement evidence within one month from the date when the request for invalidation is filed. Additional reasons or evidence which are submitted after the specified time limit may be disregarded by the Patent Reexamination Board.

[4] Rules for the Implementation of the Patent Law, Rule 70: The Patent Reexamination Board may, at the request of the parties concerned or in accordance with the needs of the case, decide to hold an oral procedure in respect of a request for invalidation. Where the Patent Reexamination Board decides to hold an oral procedure in respect of a request for invalidation, it shall send notifications to the parties concerned, indicating the date and place of the oral procedure to be held.


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