[Patent Invalidity] How to Resolve It! Answers to Popular Related Questions Worth Collecting

Answers to Popular Questions about Resolving Patent Invalidity Worth Collecting

Patent Invalidity Proceedings

refers to the situation where a patent has been granted, but it is believed that the patent does not comply with the relevant provisions of the patent law, and a request is made to the National Intellectual Property Office to declare the patent invalid.

In other words, after the State Council’s patent administrative department announces the grant of a patent, any unit or individual with the qualification to file civil litigation, including the patentee himself, may request the Patent Office to review and invalidate the patent if they believe that the grant of the patent does not meet the requirements of the “Implementation Regulations of the Patent Law” and other related regulations.

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****Ten Classic Questions about Patent Invalidity Proceedings****

1. What are the general procedures for examining a patent invalidity declaration?

2. What materials are required to file an invalidity declaration request? Is it necessary to have all the evidence before filing a request for a patent invalidity declaration?

When the requester intends to submit the invalidity declaration request to the Patent Office’s Review and Invalidity Department, the following materials should be submitted:

① The requester should submit an invalidity declaration request, explaining the reasons, and if necessary, attaching relevant original evidence; when the requester submits interim documents or relevant evidence in court, one original and one copy should be submitted, with one being the original and the other being a copy;

② If the requester entrusts a patent agency in the invalidity proceedings, they should submit a power of attorney for the invalidity proceedings to the Patent Office’s Review and Invalidity Department;

③ A copy of the requester’s qualification certificate.

The requester can submit some evidence and supplement evidence and invalidity reasons within one month from the date of submitting the request for patent invalidity.

3. Do I need to pay official fees after filing an invalidation request for a patent? What is the basis for the fees and when do I need to pay?

Yes, you do.

The fees are collected in accordance with the “Notice of the National Development and Reform Commission and the Ministry of Finance on the Reissue of the Administrative Fees of the State Intellectual Property Office and Related Issues” (Price [2017] No. 270) and the “Notice of the Ministry of Finance and the National Development and Reform Commission on Stopping Exemptions, Adjusting Some Administrative Fees, and Related Policies” (Cai Shui [2018] No. 37).

The fee for an invalidation request is 3,000 yuan for an invention patent and 1,500 yuan for a utility model or design patent. It cannot be reduced and must be paid within one month from the date of filing the invalidation request.

4. How long is the invalidation review period for a patent?

Generally, a decision on the invalidation review will be made within 6 months from the date of filing the invalidation request.

5. Can the invalidation review process be expedited? What documents do I need to submit for an expedited review, and how long will it take?

Yes, it can be expedited. You can apply if you meet one of two conditions:

① For patents involved in a case, the party has requested that the local intellectual property office handle the case, has filed a lawsuit with the court, or has requested arbitration or mediation from an arbitration and mediation organization;

② The patent involved in the invalidation case is of significant national or public interest.

If a party requests an expedited review of an invalidation case, they must submit a request for expedited review and relevant supporting documents.

The request for expedited review should be signed by relevant departments of the State Council or provincial-level intellectual property offices, or by local intellectual property offices, courts, or arbitration and mediation organizations that request an expedited review of an invalidation case. The reasons for the request must be stated.

After the State Intellectual Property Office agrees to prioritize the patent invalidation procedure, the cases of invalid declaration of invention and utility model patents will be closed within five months from the date of agreement, and the cases of invalid declaration of design patents will be closed within four months.

6. For patent invalid cases where the preliminary judgment of evidence is relatively sufficient, is it necessary to continue the defense?

All cases that can be fought for should be fought for. After careful analysis, submit a reply document and follow up on subsequent related procedures. If no defense is made, it is equivalent to giving up the right to argue, and the State Intellectual Property Office will no longer consider the opinions of the patentee.

7. How to not count the statutory period of pending reply official documents in the patent invalidation procedure?

Statutory period calculation method:

Document date +15 days + designated period (all time is natural days)

For example, the period for submitting evidence is the document date +15 days + 1 month, and the period for oral hearing receipt is the document date + 15 days + 7 days.

8. How many types of patent invalidation examination results are there, and how are they delivered?

There are three types:

maintaining the validity of the patent right, maintaining the partial validity of the patent right, and declaring the patent right invalid in its entirety.

Among them, the patent right declared invalid is deemed not to have existed from the beginning.

The patent invalidation examination results will be delivered to the parties by mail. If the notification and decision are returned, they cannot be mailed again. The Patent Office will notify the parties through the Patent Gazette. One month after the announcement, the notification and decision will be deemed to have been delivered.

9. What relief procedures are available if you do not agree with the patent invalidation examination decision?

If the party disagrees with the invalidation examination decision of the Patent Office’s review and invalidation department, they can file a lawsuit with the Beijing Intellectual Property Court within three months from the date of receiving the patent invalidation examination decision. This period should be based on the actual date of receipt + 3 months, and cannot be calculated based on the document date + 15 days + 3 months.

If the parties are dissatisfied with the procedural decisions made by the patent office’s re-examination and invalidation department, they can apply for administrative reconsideration in accordance with the law.

10. Can we trust institutions that promise to win patent invalidation requests or defenses?

No, we cannot.

Due to differences in knowledge level, practical experience, and other factors, individuals may have different interpretations of the legal provisions on patent invalidity. Therefore, even examiners of the State Intellectual Property Office may make wrong decisions.

For example, some of the classic cases released annually by the Supreme People’s Court are those in which the court reversed the decisions made in the first or second trial. When choosing an agency or law firm, we should not blindly follow promises of guaranteed wins or insider connections, but instead focus on their own strengths.

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