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.

Shaving Apparatus

Philips v. Flyco - 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) (Decision No. 19631 by the Patent Reexamination Board on November 26, 2012 for a request for invalidation)

Rule 72.2 of the Implementing 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hereinafter) withdraws his or her request or where his or her request for invalidation is deemed to have been withdrawn before the Patent Reexamination Board ("PRB" hereinafter) makes a decision, the examination of the request for invalidation is terminated.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 examinations ex officio under 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 hearing.

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.

Remarks

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.

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