The China Patent Examination Guidelines has recently undergone the latest revision and was officially implemented on January 20, 2024. This paper will briefly introduce the revised contents of the reexamination and invalidation part that have substantial influences on the practice.
I. The revision of the reexamination part
1. Interlocutory examination in reexamination
Prior to this revision, the original examination department which made the decision of rejection should conduct the interlocutory examination before the Patent Reexamination Board initiates the examination. This revision expands the subject of interlocutory examination to "the examination department that undertakes interlocutory examination", that is, the substantive examination department other than the original one can also conduct the work of interlocutory examination.
2. The scope of examination ex officio in reexamination On the basis of the original examination ex officio, four categories of examination ex officio situations are added in the revised guidelines, including:
1) Examination of the principle of good faith and credibility: for example, abnormal application, etc..
2) The panel can voluntarily examine the defects of the same nature as those in the rejection decision: for example, if the rejection decision indicates that some claims do not possess inventiveness, the panel has the right to add the objections/rejections that other claims do not possess inventiveness.
3) The panel can indicate other obvious substantial defects which are not indicated in the rejection decision, for example, practical defects, lack of clarity, being unsupported by description, etc..
4) The panel has the right to change the use of reference documents or evidences: for example, it can change the most related prior art documents, or it can ignore a certain evidence cited in the substantive examination if it is considered inappropriate.
3. The type of reexamination decision
In the previous Guidelines, the reexamination decision includes two types: maintaining the rejection decision and revoking the rejection decision. After the revision, a reexamination decision of "rejecting the request for reexamination" was added. For example, if the panel adds opinions on obvious substantial defects that are not indicated in the rejection decision, a reexamination decision of "rejecting the request for examination" can be issued.
II. The revision of invalidation part
1. The patentee renounces the patent
According to the previous Guidelines, the patentee can only renounce some of the claims or some of the multiple designs; in the revised Guidelines, the patentee is allowed to renounce all the claims or all the designs, provided that it does not infringe the legitimate rights and interests of others and the public interests.
2. Multiple invalidation procedures for the same patent right
According to the previous Guidelines, if the invalidation decision declares the patent right invalid in whole or in part, the party concerned fails to institute legal proceedings, a subsequent request for the patent right will not be accepted.
After this revision, as long as the patent right is declared partial or whole invalidation, and the invalidation decision has not been revoked by the court, the subsequent invalidation request for the same patent right will not be accepted. In other words, the patent right has been invalidated by the earlier examination decision, and there is no basis for examination at this time. Even if the invalidation decision is in the process of litigation, the later request for invalidation will not be accepted to avoid the long waiting periods for the petitioner.
3. The examination scope for invalidation
After this revision, the panel in the invalidation procedure can not only examine the request for invalidation submitted by the parties, but also examine other aspects that are obviously not in conformity with the relevant provisions of the Patent Law and its Implementing Regulations, such as that the patent is not in conformity with the principle of good faith which is not mentioned in the request for invalidation. The reason for such revision is: in the invalidation procedure, if the panel only examines the claims of the parties involved, the patent right with defects will continue to exist, which will lead to the prohibition of the technology that could have been implemented by anyone; if anyone wants to invalid the patent, he has to initiate an invalidation procedure again and pay additional costs.
4. Amendments on claims in invalidation procedure
This revision adds restrictions to the amendment of the claims, that is, "the amendments should be made regarding the defects in the request of the invalidation or the defects pointed out by the panel". Rewriting the claims is not permitted in the invalidation procedure. This is for the sake of fairness.
5. Simplifying the procedures for extraterritorial evidence.
The previous Guidelines stipulates that all extraterritorial evidences need to be notarized and authenticated, but in this revision, only notarization by the host country or documents meeting the treaty procedures are needed. Moreover, there is no need to go through the certification procedures for the extraterritorial evidence that has been accepted by the effective court decisions, administrative decisions or arbitration awards.
The above are the main modifications in the recent revision of the Examination Guidelines involving the reexamination and invalidation part. From the above, it can be seen that the reexamination and invalidation procedure is further simplified and the examination is more flexible based on the fourth revised Patent Law to conduct the reexamination and invalidation examination fairly and efficiently.
