Notes for the Party concerned (Invalidation)

1．Request for invalidation

As prescribed by Article 45 of the Patent Law, where, 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 this Law, it or he may request the Patent Reexamination Board to declare the patent right invalid.

The petitioner shall be eligible to institute a civil action.

The object of a request for invalidation shall be the granted patent, including an expired patent, or a renounced patent but not a patent renounced from the date of application, or a patent on which the Patent Reexamination Board has made an examination decision of partial invalidation of the patent right.

2．Fee for requesting invalidation

The petitioner shall pay the fee for requesting invalidation within one month from the submitting date of the request. The fee for requesting invalidation is 3000 RMB for patent for invention, 1500 RMB for patent for utility model and 1500 RMB for patent for design. The fee for requesting invalidation may not be reduced or postponed.

When remitting, the petitioner shall indicate the patent number of the patent which has been invalidated and the fee for requesting invalidation.

3．Format of Documents

The petitioner shall submit a request for invalidation and the necessary evidence in two copies.

The petitioner shall use the form of Request for Invalidation of Patent Right prescribed by the patent administration department under the State Council, and fill the items in accordance with the notes.

The petitioner shall classify and number the submitted evidence materials which shall be consistent with the contents in the attachment list.

4．Scope, Causes and Evidence of a Request for Invalidation

(1).The petitioner shall indicate the scope to be requested for invalidation clearly in the request for invalidation.

(2).The causes for invalidation shall be limited to those prescribed in Rule 65.2 only, and the relevant specific provisions of the Patent Law and is Implementing Regulations shall be indicated as independent causes.

(3).A request for invalidating a patent shall not be accepted if the causes and evidence are the same as those of a previous request for invalidating the same patent that has been decided by the Patent Reexamination Board, unless the causes or evidence have not been taken into account in the previous decision due to the reason of time limit, etc.

(4).For a request for invalidating a patent for deign based on the cause that the patent for design is in conflict with a prior legitimate right of another individual, the petitioner shall submit the effective decision of a settlement or verdict capable of proving the patent foe design being in conflict with a prior legitimate right of trademark, copyright etc .

(5).The petitioner shall explain the causes for invalidation concretely, making reference to all the evidence if applicable.

5．Appointment

5.1 Power of attorney

Where, during the invalidation procedure, the party concerned appoints a patent agency, it or he shall submit an original copy of the power of attorney (where the patentee continues to appoint a patent agency during the patent application procedure, it or he shall submit a power of attorney for the invalidation procedure). The contents in the power of attorney submitted by the petitioner shall be consistent with those in the request for invalidation. The contents in the power of attorney submitted by the patentee shall be consistent with the information of the patent right, and indicate the scope of the power.

Where the scope of power is limited to filing the request, the observations, the evidences and the other relevant materials, appearing in the oral proceedings and the other relevant matters, but not to the disposition of right, this scope of power is a general one. Where the scope of power includes any one of the following circumstances, it must be indicated specially in the power of attorney:

(1).where the attorney appointed by the patentee has the right to admit the request for invalidation submitted by the petitioner;

(2).where the attorney appointed by the patentee has the right to amend the claims;

(3).where the attorney has the right to make a compromise; and

(4).where the attorney appointed by the petitioner has the right to withdraw the request for invalidation.

5.2 Formalities regarding appointment of representation

(1).Where, during the invalidation procedure, the petitioner or the patentee appoints a patent agency, and indicates in the power of attorney that the scope of the power entrusted is limited to matters in the invalidation procedure, the formalities concerning appointment, rescission and declination of representation shall be settled before the Patent Reexamination Board, without the need to change the bibliographic data.

(2).The parties concerned shall not appoint the same patent agency.

(3).Where the petitioner is a foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China, it or he shall appoint a patent agency.

(4).Where the petitioner has appointed more than one patent agency at the same time, he shall designate in written form one of the agencies as the contact person.

(5).Where a party intends to appoint a citizen as his representative, the provides governing the appointment of a patent agency shall apply mutatis mutandis. The scope of power for a citizen representative shall be limited to making observations and receiving documents in oral proceedings.

(6).For other matters no described in the above, Chapter 1, Section 6.1 of Part I of Guidelines for Patent Examination shall apply mutatis mutandis.

6．Notifications of Formal Examination

6.1 Notification of Acceptance of Request for Invalidation

Where, after the formal examination, it is found that the request for invalidation conforms with the relevant provisions of the Patent Law, its Implementing Regulations and these Guidelines, the Patent Reexamination Board shall issue Notification of Acceptance of Request for Invalidation to the parties concerned, and transfer copies of the request for invalidation and the relevant documents to the patentee and invite him to make response within one month from the date of receipt of the notification. Where no response is made by the patentee, examination of the request will not be affected.

6.2 Notification to Make Rectification

Where, after formal examination, the request for invalidation is considered not in conformity with the relevant provisions of the Patent Law or its Implementing Regulations or these Guidelines and needs to be rectified, the Patent Reexamination Board shall issue Notification to Make Rectification, and invite the petitioner to make rectification within the specified time limit from the date of receipt of the notification. Where the petitioner makes a response to the Notification to Make Notification, it or he shall submit the form of Rectification for Reexamination or Invalidation Procedure prescribed by the patent administration department under the State Council in two copies and the rectified documents.

Common problems that need to be rectified:

(1).the petitioner fails to use the Request for Invalidation prescribed by the patent administration department under the State Council;

(2).the signature of the petitioner  in the Request for Invalidation or the power of attorney is inconsistent with the name of the petitioner;

(3).the petitioner has appointed a patent agency but the name and code of the patent agency, and the attorney are not filled in the Request for Invalidation, or are inconsistent with the contents in the power of attorney;

(4).the name of the patentee or the invention-creation in the Request for Invalidation or the power of attorney are inconsistent with those when the application was filed or after the legal change;

(5).the Request for Invalidation is not signed by the petitioner, or by the patent agency ;

(6).the attachments of the Request for Invalidation are inconsistent with those in the attachment list;

(7).the petitioner appoints a patent agency but does not submit the power of attorney;

(8).the petitioner and the patentee appoint the same patent agency;

(9).the power of attorney is not signed by the petitioner or the patent agency;

(10).the scope of the power entrusted is not clear or no attorney is designated;

(11).the petitioner has appointed more than one patent agency at the same time, but fails to designate in written form one of the agencies as the contact person; and

(12).the petitioner is a foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China, but fails to appoint a patent agency.

The patentee concerning the representation rectifications, shall apply mutatis mutandis above.

6.3 Notification that Request for Invalidation Deemed Not to Have Been Made

In any of the following circumstances, the Patent Reexamination Board shall issue a Notification that Request for Invalidation Deemed Not to Have Been Made to the petitioner:

(1).where the petitioner has not paid, or not paid in full, the fee for requesting invalidation within the time limit;

(2).where the petitioner fails to make a response to the Notification to Make Rectification within the time limit;

(3).where the petitioner has made rectifications within the specified time limit but still have the same defect  after two rectifications;

(4).where the petitioner is a foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China, but fails to appoint a patent agency and fails to make rectifications within the specified time limit.

6.4 Notification of Nonacceptance of Request for Invalidation

In any of the following circumstances, the Patent Reexamination Board shall issue a Notification of Nonacceptance of Request for Invalidation to the petitioner:

(1).where the petitioner is not eligible to institute a civil action;

(2).where the Request for Invalidation is not directed to a granted patent;

(3).where the Request for Invalidation is directed to the patent which has been invalidated by the effective examination decision made by the Patent Reexamination Board;

(4).where the patentee files a request for invalidation of his own patent right and request to invalidate the whole of the patent, the evidence submitted is not a publication, or not all the patentees  request for invalidation;

(5).where the causes for invalidation are not limited to those prescribed in Rule 65.2 of the Implementing Regulations;

(6).where the causes and evidence are the same as those of a previous request for invalidating the same patent that has been decided by the Patent Reexamination Board;

(7).where the petitioner fails to explain concretely the causes for invalidation, or fails to explain with reference to all the evidence or fails to indicate the corresponding evidence for each cause;

(8).where the petitioner is a foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China, but fails to appoint a patent agency and fails to make rectifications within the specified time limit;

(9).Where, for a request for invalidating a patent for design based on the cause that the patent for design is in conflict with a legitimate right of another individual, which was acquired prior to the filing date of the patent, the petitioner fails to prove he is the prior patentee or the party  interested, or fails to submit evidence to prove such conflict of rights;

(10).where  several petitioners submit a request for invalidation, but the condition where the request is submitted for the patent right shared by all the patentees is excluded;

6.5 Notification of Examination Status of Request for Invalidation

Where the accepted request for invalidation is involved in a patent infringement case, the Patent Reexamination Board may, at the request of the People’s court or a local intellectual property administrative authority or the party concerned, issue Notification of Examination Status of Request for Invalidation to the People’s Court or the local intellectual property administrative authority which is handling the patent infringement case.

7．Addition of Causes for Invalidation

After a request for invalidation is accepted by the Patent Reexamination Board, the petitioner may add causes within one month from the date when the request for invalidation is filed, and shall explain the causes concretely within this period.

Where the petitioner raises additional causes for invalidation after one month from the date of submitting the request, generally the Patent Reexamination Board will not take them into account, unless in any of the following circumstances:

(1).for claims amended by way of combination by the patentee, addition of causes for invalidation is made within the time limit specified by the Patent Reexamination Board, and the added causes are explained concretely within the time limit; or

(2).the addition is to change the causes for invalidation which are obviously inappropriate to the evidence submitted.

8．The time limit for presenting evidence

8.1 Presenting evidence by the petitioner

After a request for invalidation is accepted by the Patent Reexamination Board, the petitioner may add evidences within one month from the date when the request for invalidation is filed, and shall explain concretely the relevant causes for invalidation with respect to the additional evidence within this period.

Where the petitioner presents additional evidence after one month from the date of filing the request for invalidation, generally the Patent Reexamination Board will not take it into account, unless in any of the following cases:

(1).concerning claims amended by way of combination or counter-evidence presented by the patentee, the petitioner presents additional evidence within the time limit specified by the Patent Reexamination Board, and explain the relevant causes concretely with reference to the additional evidence within this period;

(2).by the closure of oral proceedings, the petitioner presents such evidence of common knowledge in the skilled art as those in a technical dictionary, technical manual, or textbook, or such complementary evidence for meeting the legal requirement for evidence as a notary certificate or the original, and explain the relevant causes concretely with reference to the additional evidence within the period.

Where the petitioner presents evidence in a foreign language, the time limit for submitting the Chinese translation thereof is the same as that for presenting the evidence.

8.2  Time Limit for presenting evidence by the patentee

The patentee shall present evidence within the time limit for response as specified by the Patent Reexamination Board, but he may present, by the closure of oral proceedings, such evidence of common knowledge in the skilled art as those in a technical dictionary, technical manual, or textbook or such complementary evidence used for meeting the legal requirement for evidence as a notary certificate or the original.

Where the patentee presents or adds evidence, he shall explain concretely the evidence within the above time limit.

Where the patentee presents evidence in a foreign language, the time limit for submitting the Chinese translation thereof is the same as that for presenting the evidence.

Where the patentee does not present or add evidence within the above time limit, or he fails to explain concretely the evidence within the above time limit, the Patent Reexamination Board will not take it into account.

8.3 Presenting evidence in extension period

Where either of the parties has evidence to prove that his failure to present evidence within the time limit due to force majeure, he may, within the specified time limit, request in written form the extension of the time limit.

9．Disposal by the party concerned

The petitioner may renounce part or all of the scope, causes and evidence he has raised for the request for invalidation. For the scope, causes or evidence renounced by the petitioner, usually the Patent Reexamination Board will not investigate or examine them any more.

In the invalidation procedure, the party concerned is entitled to compromise with the opposite party at his own wish. In case where both the petitioner and the patentee have expressed to the Patent Reexamination Board their willingness to compromise, the Board may give the both parties a certain period of time to negotiate, and temporarily refrain from making an examination decision until requested by either party or the time limit as specified by the Patent Reexamination Board has expired.

In the invalidation procedure, if, in response to the request for invalidation, the patentee narrowed the extent of protection of the patent right on his own initiative and the corresponding amended text was accepted by the Patent Reexamination Board, then it shall be deemed that the patentee admitted a larger extent of protection did not conform to the relevant provisions of the Patent Law and its Implementing Regulations and acknowledged the request for invalidation concerning the claim, and thus the burden of proof on the petitioner for invalidation of said claim is exempted.

In the invalidation procedure, if the patentee renounced by declaration some of the claims or some of the multiple designs, it shall be deemed that the patentee admitted that the claims or designs did not conform to the relevant provisions of the Patent Law and its Implementing Regulations and acknowledged the request for invalidation concerning the claims or designs, and thus the burden of proof on the petitioner for invalidation of said claims or designs is exempted.

10．Abstain

In any of the following circumstances, a panel member shall abstain from taking part in the panel, and where the panel member fails to abstain, the party concerned may challenge him as of right:

(1).where the panel member is a near relative of any party or the agent of any party;

(2).where the panel member has an interest in the patent right;

(3).where the panel member has any other kinds of relations with any party or the agent of any party that may influence impartial examination and hearing;

(4).where the panel member who has taken part in the examination of the same application.

Where the party concerned files a motion to abstain a member of the panel, he shall raise the recusation in written form and explain the causes therein, and attach relevant evidence if necessary.

11．Oral proceedings

11.1 Determination of oral proceedings

The Patent Reexamination Board may, at the request of the parties concerned or in accordance with the needs of the case, decide to take oral proceedings for a request for invalidation.

In the invalidation procedure, the party concerned may request for oral proceedings and explain the reasons therefore to the Patent Reexamination Board. The request shall be submitted in written form. The parties concerned in the invalidation procedure may request for oral proceedings based on any of the following reasons:

(1).one of the parties requests for face-to-face cross-examination of evidence and debate with the opposite party;

(2).there is a need to explain the facts to the panel;

(3).there is a need to demonstrate a material object; or

(4).there is a need to call a witness giving evidential statement in testimony.

For cases of request for invalidation for which no oral proceedings has been taken, where the Patent Reexamination Board receives a request from the party concerned for oral proceedings in written form based on one of the reasons mentioned above, the panel shall decide to take oral proceedings.

11.2 Rights and obligations of the parties concerned

(1).Rights of a party concerned

A party concerned shall have the right to challenge a panel member; the right to make compromise with the opposite party; the right to call a witness having provided oral evidence in testimony before the panel in the oral proceedings and the right to request for demonstration of material evidence; and the right to debate. A petitioner shall have the right to withdraw the request; the right to abandon some causes for invalidation and the corresponding evidence; and the right to narrow down the scope to be requested for invalidation. A patentee shall have the right to renounce part of the claims and the corresponding evidence submitted.

(2).Obligations of a party concerned

A party concerned shall abide by the rules of oral proceedings and keep the order of oral proceedings shall request the approval of the chairman before speaking, and shall not interrupt the speech of the other party. Observations and debate shall be restricted to the scope, which is relevant to the examination of the case as defined by the panel. The party concerned shall bear the burden of proof for what he alleges, and shall explain reasons in opposing the allegations of the opposite party. During oral proceedings, any party shall not quit from oral proceedings midway without permission of the panel.

12．Suspension of Invalidation Procedure

A request for suspension of the invalidation procedure shall be filed before the flow management department of the Patent Office.

With respect to patents in the invalidation procedure, the duration for suspension requested by the party concerned in a dispute over right ownership or asked by the People’s Court to assist in execution of property preservation shall not exceed one year. The Patent Office will resume the relevant procedures on its own initiative once the time limit of suspension expires.

With respect to the request for suspension of procedures approved by the Patent Office, the Patent Reexamination Board will issue a Notification of Suspension Status of Invalidation Procedure to notify the petitioner of the starting date and expiry date of the duration of the suspension of procedure.

13．Changes in Bibliographic Data

The change in the bibliographic data during the invalidation procedure shall be handled in accordance with the relevant provisions of Chapter 1, Part I of the Guidelines for Patent Examination before the corresponding department of the Patent Office. The change in the bibliographic data shall take effect from the date of issuance of Notification of Passing Examination on Formalities by the Patent Office.

14．Termination of the invalidation procedure

In any of the following circumstances, the invalidation procedure will be terminated:

(1).where the petitioner withdraws his request for invalidation before the Patent Reexamination Board makes an examination decision on it, unless, based on the examination it has hone, the Patent Reexamination Board finds that a decision invalidating the patent right in whole or in part can be made;

(2). where the petitioner fails to make a response to Notification of Oral Proceedings within the specified time limit and fails to appear in the oral proceedings so that the request for invalidation is deemed withdrawn, unless, based on the examination it has done, the Patent Reexamination Board finds that a decision invalidating the patent right in whole or in part can be made;

(3). where a request for invalidation, which has been accepted is found to be inconformity with the requirements for acceptance and is thus rejected; or

(4).where, after the Patent Reexamination Board has made a decision of examination, the party concerned does not institute legal proceedings before the People’s Court within three months from receipt of the decision, or the decision is upheld by an effective judgment of the People’s Court.

After the Patent Reexamination Board has made an examination decision of declaring a patent right invalid in whole, the party concerned does not institute legal proceedings before the People’s Court within three months from receipt of the decision, or the decision is upheld by an effective judgment or the People’s Court, the invalidation procedures in all other cases concerning the same patent right shall terminate.

15．Judicial Examination

Where a petitioner is not satisfied with the examination decision of declaring a patent right invalid made by the Patent Reexamination Board, it or he may institute legal proceedings in the Beijing First Intermediate People’s Court within three months from the date of receipt of the notification.

Enclosures:

1．Way of payment

(1).By post office

No.6, Xitucheng Road, Jimenqiao Haidian District, Beijing City 100088 China

Merchant No. 110000860

Name of payee: the Charges departments of Patent Office of the State Intellectual Property Office

(2).By bank

Bank name: Citic Bank Beijing Zhichunlu Branch

Account No: 7111 7101 8260 0166 032

Account name: the Patent Office of the State Intellectual Property Office

Query: 010-62085566

2．For the relevant laws and regulations as well as the forms prescribed by the patent administration department under the State Council, please refer to www.sipo.gov.cn and www.sipo-reexam.gov.cn.

3．Address: the Patent Reexamination Board of the SIPO, No.6, Xitucheng Road, Jimenqiao Haidian District, Beijing City 100088 China;

Telephone: 010-62801799;

Fax: 010-62801800