China: The First Application Of The Principle Of Conducting Examinations Ex Officio Under Rule 72.2 Of The Implementing Regulation Of The Chinese Patent Law (2010) Philips v. Flyco (Article No. 16 From "China Patent Case Review 2015" By Beijing East IP Ltd.
Philips v. Flyco- The First
Application of the Principle of Conducting ExaminationsEx Officiounder Rule 72.2 of
theImplementing Regulation of the Chinese
Patent Law (2010)(Decision No. 19631 by the
Patent Reexamination Board on November 26, 2012 for a request for
Rule 72.2 of theImplementing
Regulations of the Chinese Patent Law (2010)states that "where the person requesting invalidation
("petitioner" hereinafter) withdraws his or her request
or where his or her request for invalidation is deemed to have been
withdrawn before the Patent Reexamination Board ("PRB"
hereinafter) makes a decision, the examination of the request for
invalidation is terminated. However, where the PRB has done
sufficient examination work to decide whether to invalidate or
invalidate in part the patent right, the examination shall not be
terminated." This examination decision is regarded as the
first application of the principle of conducting
examinationsex officiounder Rule 72.2.
Examination Decision No. 19631, which is related to the validity
of patent No. ZL95190642.9, titled "Shaving
Apparatus", is the first decision that involves the petitioner
withdrew the invalidation request and the examination of the
request for invalidation was not terminated. This is the PRB's
first application of the principle of conducting examinations
ex officio under Rule 72.2.
Prior to this request for invalidation, the PRB made another
examination decision, No. 12676, on the same patent which stated
that claim 1 was invalid, but the remaining claims 2-7 were valid.
The latest request for invalidation for patent No.
ZL95190642.9 was submitted by the petitioner, Shanghai
Flyco Electrical Appliance Co., Ltd. ("Flyco"
hereinafter), on May 3, 2012. Flyco requested to invalidate claims
2-7, under Article 22, Paragraph 3 of the Chinese Patent Law
(2001), due to lack of inventiveness. Both parties appeared to
the oral hearing which took place on October 17, 2012. During the
oral hearing, the patentee, Philips Electronics Appliance Co., Ltd.
("Philips" hereinafter), stated that claims 2 and 3
should be dismissed and claims 4-7 possessed inventiveness.
It should be noted that the petitioner withdrew its request for
invalidation on October 24, 2012, i.e. seven days after the oral
On November 26, 2012, the PRB issued Examination Decision No.
19631, which invalidated claims 2-3 and kept the validity of the
remaining claims 4-7.
According to the Guidelines for Patent Examination
(2010), Rule 72.2 follows the principle of disposal by the
party concerned which is one of the general principles often used
during the invalidation procedure. When the petitioner files the
invalidation request, he or she has to state the scope and grounds
of the request, and may submit supporting evidence. During the
examination procedure, the petitioner may take away some of the
scope and grounds of the request, and/or evidence. In the case
where both the petitioner and the patentee have expressed to the
PRB their willingness to settle, the PRB may give both parties some
time to negotiate and would temporarily refrain from making an
examination decision. If the petitioner withdraws his or her
request for invalidation, the PRB will usually terminate the
examination procedure for the invalidation request.
However, the PRB may not terminate the examination procedure
when there is a concern related to social justice, public interest,
or administrative resources. The principle of conducting
examinations ex officio of Rule 72.2 allows the PRB to
continue the examination procedure if the PRB has done sufficient
examination work to reach a decision to invalidate at least a part
of the asserted patent.
This case illustrated a guideline for patentees when they are
involved in an invalidation procedure. To strive to maintain the
validity of the claims, the patentee should carefully determine the
stability of the claims based on the grounds and evidence raised by
the petitioner, and should avoid voluntarily abandoning any part of
the patent right either verbally or by filing an amendment of the
claims. In addition, if the patentee is trying to settle with the
petitioner, he or she shall notify the PRB panel before the end of
the oral hearing of the invalidation procedure.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).