China: Application Of Evidence In The Process Of Requesting Invalidation Of A Patent

Last Updated: 3 January 2018
Article by AFD China Intellectual Property

Pursuant to PATENT LAW OF THE PEOPLE'S REPUBLIC OF CHINA, any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical applicability. Any design for which patent right may be granted shall not be a prior design, nor has any entity or individual filed before the date of filing with the patent administration department under the State Council an application relating to the identical design disclosed in patent documents announced after the date of filing. Any common technique or design is not patentable.

In China, utility model and design patent applications only need to go through preliminary examination, while invention patent applications also need to go through substantive examination, but due to the complexity of specific techniques and the limitation of prior art search, inevitably there are some patent applications which do not meet the patent eligibility requirements getting granted. As a result, the PATENT LAW provides the procedure for declaring the patent right invalid: starting from the date of the 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 PATENT LAW OF THE PEOPLE'S REPUBLIC OF CHINA and its Implementing Rules, it or he may request the Patent Reexamination Board of State Intellectual Property Office to declare the patent right invalid.

Pursuant to Rule 65 of IMPLEMENTING REGULATIONS OF THE PATENT LAW OF THE PEOPLE'S REPUBLIC OF CHINA, "Anyone requesting invalidation or part invalidation of a patent right in accordance with the provisions of Article 45 of the Patent Law shall submit a request and the necessary evidence in two copies. The request for invalidation shall state in detail the grounds for filing the request, making reference to all the evidence as submitted, and indicate the piece of evidence on which each ground is based."

From the above regulations, it can be seen that in the invalidation process, the evidence and the explanation of the evidence are very important. Then, when should the petitioner submit the evidence and how to choose the evidence?

Time for submitting evidence

After a request for invalidation of patent right 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 evidence or amendment and supplement on the original evidence, which are submitted after the specified time limit may be disregarded by the Patent Reexamination Board.

How to choose evidence

The lack of novelty and/or inventiveness is the most often used reason and also a critical reason for requesting invalidation. In the process of invalidation, it is necessary to make full use of the evidence document and to extract useful information from the evidence document so as to prove that the technical scheme for which protection is sought in the involved patent has no novelty or inventiveness and thus should be declared invalid.

Let us look at the following example and see what kind of inspiration it can give us.

The involved patent claims a joint for reinforcement connection, and the independent claim of the patent defines three angle ranges between the components of the joint. In the invalidation proceedings, none of the evidence documents provided by the invalidation petitioner has clear literal records of a specific value or range associated with the above-mentioned angle. However, after measuring, one can find that the angle value shown in the accompanying drawings of the evidence completely falls within the above three angle ranges defined in the involved patent. Thus, in the invalidation request and during the oral hearing, the petitioner measured the angle after amplifying the corresponding part in the drawings of the evidence to the extent equivalent to that of the patent involved and clearly showed the result of the measurement in the form of an image file. By comparing the angle shown in the evidence with the angle of the patent involved, the petitioner proved that the angle of the patent involved has been disclosed by the evidence. In addition, with respect to the above three angle ranges, the petitioner also provided a written testimony of experts in the art at the time of making the invalidation request to further prove that the angle ranges claimed in the patent involved are conventional choices in the art.

In the final invalidation decision, the collegial panel did not directly admit the angle measurement results of the petitioner and also did not directly admit the experts' written testimony submitted by the petitioner on the grounds that" the subject determining whether an invention has inventiveness is a person of ordinary skill in the art in the sense of the patent law, but not an expert in the art". However, the collegial panel finally identified the angle ranges of the patent involved as conventional choices in the art, and thus after examination, they decided to declare all the claims in the patent involved invalid.

Inspiration from the case

First, we can make full use of the drawing information (including the angles, characteristics, values, etc.) in the evidence documents, and present such information visually in the form of image files.

Second, the evidence accumulation and language intensification may affect the decision of the collegial panel on the case. It is possible to increase the the collegial panel's impression by repeated providing evidence and intensifying the language. Therefore, for invalidation cases, sometimes even if the viewpoints expressed by the petitioner cannot be fully admitted by the collegial panel, but through the evidence accumulation and language intensification, it is possible for the petitioner to have a certain impact on the outcome of the cases when the collegial panel makes decisions.

Therefore, when submitting an invalidation request, the petitioner must give full play to the subjective initiative, carefully study the relevance between the involved patent documents and the reference documents, and fully exploit any evidence that can support the request for the invalidation of the involved patent. Even if there is no direct evidence, indirect evidence established by deduction should also be submitted. The evidence can be in varied forms and can be in the form of visual images. In the course of the request, the petitioner should repeatedly and comprehensively stated his/her viewpoints and thereby enhance the examiners' impression and their acceptance of the petitioner's grounds for the invalidation request, so as to strive for review result in favor of the petitioner.

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.

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