Evidence and Amendment Rules in Chinese Patent Invalidation Proceedings

An accused infringer often challenges the asserted patent through invalidation proceedings. Article 45 of the Patent Law allows any entity or individual, from publication of grant onward, to ask the Patent Reexamination Board to invalidate a patent granted contrary to the law. The procedure begins at a party’s request after grant and normally involves both the petitioner and patentee.

Procedure

1. The petitioner files a request identifying the grounds, facts and scope of the requested invalidation and pays the fee. Additional grounds may be submitted within one month of filing.

2. After formal examination, the Board notifies both parties of acceptance, sends the request and supporting documents to the patentee and sets a response period.

3. The patentee responds to the grounds and evidence within that period and may amend the patent documents when responding.

4. The Board conducts oral proceedings, allowing face-to-face examination of evidence and argument.

5. The Board issues its decision and serves it on both parties. Strict rules govern the evidence and amendments permitted during this process.

Submission of Evidence

A petitioner may submit evidence with the request and supplement it within one month. The grounds must be explained specifically with reference to the evidence. Evidence, including supplements, may be disregarded if the corresponding grounds are not properly explained within the prescribed period.

Evidence submitted after one month is generally not considered, subject to two exceptions.

First, the petitioner may submit evidence responding to the patentee’s counterevidence within a period set by the Board, with a specific explanation of the relevant grounds.

Second, by the close of oral proceedings, the petitioner may submit common-knowledge evidence, such as technical dictionaries, manuals or textbooks, or documents completing legal evidence requirements, such as notarizations or originals. The relevant grounds must again be specifically explained.

A patent may be challenged repeatedly on different evidence, but only one request may be made on the same grounds and evidence.

The patentee must respond and submit any evidence within the period set by the Board. Common-knowledge materials and documents completing legal evidence requirements should be submitted by the close of oral proceedings.

Special Evidence Requirements

Foreign-language evidence: a written Chinese translation must be submitted within the prescribed period, otherwise the evidence is treated as not submitted. A party disputing the translation must submit its own Chinese translation of the disputed passages within the prescribed period; failure to do so is treated as acceptance of the translation.

Witness testimony: witnesses must attend and submit to questioning at the oral hearing.

Internet evidence: authenticity and public availability, especially publication date, are frequently disputed. The Board checks the publication time and the authenticity of both form and content. Publication means the earliest time the public could access the material online. For an ordinary website, the stated publication date is normally accepted absent contrary evidence. Formal authenticity concerns forgery; substantive authenticity concerns alteration of the information or its date. Internet evidence should be notarized, and its source may be demonstrated by showing the acquisition process at the hearing.

Evidence created abroad: it must be notarized in the country of origin and authenticated by the Chinese embassy or consulate, or satisfy the formalities required by an applicable treaty.

Amendments to the Patent

The patentee may amend when responding to the invalidation request, to added grounds or evidence, or to grounds or evidence introduced by the Board even though not raised by the petitioner.

Amendments are limited to claims and must satisfy four principles: (1) the designation of the claimed subject matter cannot change; (2) protection cannot extend beyond the granted scope; (3) amendments cannot exceed the original description and claims; and (4) technical features absent from the granted claims generally cannot be added. Design patent documents cannot be amended.

Permitted amendments generally comprise deletion of a claim, deletion of a technical solution, further limitation of a claim and correction of an obvious error.

Deleting a technical solution means removing one or more alternatives from a claim. For example, “at least partly” covers both partial and complete performance. Deleting “at least” retains the partial solution and removes the complete solution; such an amendment is permitted.

Further limitation adds one or more technical features from another granted claim to narrow the scope. A feature disclosed only in the description cannot be added. For example, where an independent claim concerns “a container” and a dependent claim states that “the container is an intermodal container”, that limitation may be added to the independent claim. The designation of its subject matter cannot simply be changed to “an intermodal container”.

A patentee may delete a claim or a technical solution within a claim at any time before the Board makes its invalidation decision.