To invalidate patent is a common attack method in the "patent war", especially when patentee uses the patent to litigate or demand high licensing fee.
I divide the patent invalidation proceedings into three stages: preparation stage, oral hearing stage, and invalidation decision stage.
Preparation stage
First, it is advisable to search for the evidence of prior arts based on the target patent in order to undermine the novelty or inventiveness of the claims of the target patent.
Although based on certain grounds, such as insufficient disclosure of the specification, lack of support for the claims, lack of necessary technical features, and new matters, etc., the patent can also be invalidated, but the lack of novelty and inventiveness are the most common grounds for invalidating patents. Therefore, we recommend that when preparing to initiate an invalidation request, a prior art search should be conducted.
After the preparation of the evidence is done, you can start to draft the request for invalidation including reasoning with evidence thereof. When the evidence is in a foreign language, the quoted parts need to be translated into Chinese.
When filing the invalidation request, the following documents should be filed before CNIPA.
Power of attorney, with petitioner’s information such as name, address, phone number and postcode thereon.
If the petitioner is a foreign entity, the notarized and legalized certificate of the entity (entity registration) and its Chinese translation shall be required too.
When the above documents are ready, you can submit an invalidation request.
Oral hearing stage
If there is not much time left for preparation before submission, according to related rules of Chinese patent law, the reasons and evidence for invalidation can be supplemented within one month after the invalidation request is filed.
After receiving the invalidation request, the Patent Reexamination and Invalidation Department of the CNIPA, aka PRID will transfer it to the patentee and give the patentee a certain time to respond. After receiving the response from the patentee, PRID usually forwards the response to the petitioner and at the same time arranges an oral hearing.
Usually PRID will always arrange oral hearings for invalidation requests, unless the scope of the invalidation request is not clear, or the petitioner does not specify the reasons for invalidation, or the reasons presented are not legal reasons for invalidation, or no important evidence is submitted, or the reasons and evidence submitted have been already considered in the previous round of invalidation decisions. This means poor preparation was done for the invalidation request.
In this case, the invalidation request will be deemed to have not been filed or will not be accepted, and of course there will not be oral hearing.
If the petitioner fails to submit a receipt to the oral hearing notice issued by the PRID within the specified time limit and does not participate in the oral hearing, his request for invalidation shall be deemed to have been withdrawn; the oral hearing can be conducted in the absence of the patentee. The number of each party and its agents participating in the oral hearing shall not exceed four.
The oral hearing procedure is very important. The petitioner and the patentee will debate under the direction of the collegial panel and explain their reasons. After the oral hearing, both parties need to sign and confirm the record of the oral hearing to ensure the accuracy of the presentations.
The collegial panel may allow both parties to submit additional statements within a specified time limit after the oral hearing, but the new reasons and evidence cannot be added.
Invalidation decision stage
After the oral hearing, the collegial panel needs to conduct a collegiate discussion and determine the conclusion of the invalidation decision (i.e. all invalid, partial invalid, or maintain valid) through the principle of minority obeying the majority. From the filing of the invalidation request to the final decision, it will take about 6 to 8 months.
Of course, if the petitioner withdraws the request after the invalidation oral hearing, the collegial panel will usually close the case. Generally speaking, the petitioner can withdraw the invalidation request at any time before the invalidation decision is made. The main reasons for the withdrawal of the request are: the invalid reason and evidence are not perfect and need to be further improved, or the parties have reached a settlement.
Those who are not satisfied with the invalidation decision may sue in the court within three months from the date of the receipt of the decision. After this time limit, the patentee or the petitioner has lost the opportunity to initiate an administrative lawsuit in the Beijing IP court. The administrative litigation after the invalidation proceedings is a two-trial-for-final procedure. The first instance is in the Beijing IP Court, and the second instance is the IP tribunal in the Supreme People's Court.
