Patent practice - impact of invalidation procedures on the trial period of patent infringement disputes

Source: CNIPA - priority processing for patent invalidation cases arising from patent infringement disputes (IPRdaily)

During patent infringement dispute cases, defendants often request patent invalidation as a common defense strategy. However, in most cases, this strategy will not suspend the patent infringement dispute or prolong the trial period.

Articles 4 to 8 of the Supreme People's Court's Several Provisions on the Application of Law to the Trial of Patent Dispute Cases (amended in 2020) provide the following rules for handling infringement cases involving invalidation proceedings:

• In cases of invention patent infringement, the litigation may not be suspended.
• In cases of utility model or design patent infringement, in which the patent right has been maintained by the Patent Administration Department under the State Council, the litigation may not be suspended.
• In cases of utility model or design patent infringement, the court may not suspend the proceedings under any of the following conditions:

(1) The search report or evaluation report provided by the plaintiff does not find the cause of invalidation.
(2) There is sufficient evidence provided by the defendant to prove that the technology has been publicly used.
(3) The evidence provided by the defendant in requesting patent invalidation is obviously insufficient or the grounds for invalidity is obviously insufficient.
(4) Other situations where the court decides that proceedings should not be suspended.

Together, these rules ensure that patent infringement dispute cases will not be suspended or delayed by invalidation proceedings. The percentage of suspended infringement cases due to invalidation proceedings has been consistently low. 

Following an analysis of 5,983 patent infringement litigation trials concluded from 2011 - 2015 in 13 courts across China, results showed that only 198 cases (3.3%) were requested to be suspended as a result of invalidation proceedings. Among those 198 cases, only 74 cases (1.2%) were actually suspended by the court. Thus, it is very unlikely that invalidation proceedings will ultimately lead to litigation suspension and an abnormally long trial period.

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