Any applicant who is not satisfied with the Office's decision of rejecting his application may, within three months from the date of receipt of the notification, request the Patent Reexamination Board to make a reexamination. Any entity or individual who considers that the grant of a patent right is not in conformity with the relevant provisions of the Patent Law may request the Patent Reexamination Board to declare the patent right invalid.
The flow chart of examination on requests for reexamination and invalidation is as follows:
- Reexamination Application
- Notes for the Party concerned (Reexamination)
As prescribed by Article 41 of the Chinese Patent Law, where an applicant for patent is not satisfied with the decision of the patent administration department under the State Council rejecting the application, the applicant may request the Patent Reexamination Board to make a reexamination.
The decision of rejection that a reexamination request may be filed includes the decision rejecting the application during the preliminary examination and substantive examination procedures. Where a petitioner does not file a reexamination request with respect to the decision of rejection made by the Patent Office, the reexamination request will not be accepted.
2. Fees for Requesting Reexamination
The petitioner shall pay the reexamination fee within three months from the date of receipt of the rejection decision. The reexamination fee is 1000 RMB for patent for invention, 300 RMB for patent for utility model and 300 RMB for patent for design. The reexamination fee may be reduced or postponed. The petitioner may pay 60% of the fee for a service invention, and 80% of a non-service invention.
When remitting, the petitioner shall indicate the application number and the reexamination fee.
3. Format of Documents
The petitioner shall submit request for reexamination and explain the causes therein, and attach the relevant evidence if necessary.
The petitioner shall use the form of Request for Reexamination prescribed by the patent administration department under the State Council, and fill the items in accordance with the notes.
The petitioner making the request may amend its or his patent application at the time when it or he requests reexamination or makes responses to the notification of reexamination of the Patent Reexamination Board. However, the amendments shall be limited only to remove the defects pointed out in the decision of rejection of the application or in the notification of reexamination.
4. Formalities Regarding Appointment of Representation
(1).As regards the appointment, rescission or decline of appointment in the reexamination procedure, formalities shall be settled before the Patent Office. However, if the petitioner appoints a patent agency in the reexamination procedure and indicates in the power of attorney that the scope of the power entrusted is limited to matters in the reexamination procedure, the formalities concerning the appointment, rescission or decline of appointment shall be settled before the Patent Reexamination Board, without the need to change the bibliographic data.
(2).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.
(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).For other matters not described in the above, Chapter 1, Section 6.1 of Part I of Guidelines for Patent Examination shall apply mutatis mutandis.
5. Notification of Formal Examination
5.1 Notification of Acceptance of Request for Reexamination
Where, after formal examination, the request for reexamination is considered in conformity with the relevant provisions of the Patent Law and its Implementing Regulations and these Guidelines, the Patent Reexamination Board shall issue Notification of Acceptance of Request for Reexamination to notify the petitioner.
5.2 Notification to Make Rectification
Where, after formal examination, the request for reexamination 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 Rectification, it or he shall submit the form of Rectification for Reexamination or Invalidation Procedure prescribed by the patent administration department under the State Council and the rectified documents.
Common problems that need to be rectified:
(1).the petitioner fails to use the Request for Reexamination prescribed by the patent administration department under the State Council;
(2).the name of the petitioner or the invention-creation in the Request for Reexamination is inconsistent with the contents when the application was filed or after the legal change;
(3).the petitioner has appointed a patent agency when filing an application but the name and code of the patent agency, and the attorney are not filled in the Request for Reexamination, or the name and code of the patent agency, and the attorney are inconsistent with the contents when the application was filed or after the legal change;
(4).the petitioner has appointed a patent agency during the reexamination produce, but fails to submit a power of attorney or the scope of the power entrusted is not indicated therein;
(5).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;
(6).the attachments of the Request for Reexamination are inconsistent with those in the attachment list;
(7).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
(8).the Request for Reexamination is not signed by the petitioner (including that not signed by all of the petitioners), or not signed by the patent agency when the petitioner has appointed a patent agency.
5.3 Notification that Request for Reexamination Deemed Not to Have Been Made
In any of the following circumstances, the Patent Reexamination Board shall issue a Notification that Request for Reexamination Deemed Not to Have Been Made to the petitioner:
(1).where the petitioner fails to make rectification within the time limit specified in the Notification to Make Rectification issued by the Patent Reexamination Board;
(2).where the petitioner has made two rectifications within the specified time limit but still have the same defect;
(3).where the petitioner submits the Request for Reexamination within three months from the date of receipt of the decision of rejection, but has not paid, or not paid in full, the reexamination fee within the time limit;
(4).the petitioner, under the above item (3), does not file a request for restoration of right or the request for restoration of right is not in conformity with the provisions of Rule 6 of the Implementing Regulations or Article 99(1) of the Patent Law; and
(5).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.
5.4 Notification of Nonacceptance of Request for Reexamination
In any of the following circumstances, the Patent Reexamination Board shall issue a Notification of Nonacceptance of Request for Reexamination to the petitioner:
(1).where the person filling a request for reexamination is not the applicant of the rejected application;
(2).where the petitioner fails to file the request for reexamination with respect to the decision of rejection made by the Patent Office;
(3).where the petitioner fails to file the request for reexamination within three months from the date of receipt of the decision of rejection;
(4).where the petitioner, under the above item (3), does not file a request for restoration of right or the request for restoration of right is not in conformity with the provisions of Rule 6 of the Implementing Regulations or Article 99(1) of the Patent Law;
(5).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; and
(6).where the application concerning the request for reexamination has not been rejected yet.
6.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 the petitioner or the agent of the petitioner;
(2).where the panel member has an interest in the application for patent;
(3).where the panel member has any other kinds of relations with the petitioner or the agent of the petitioner 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 challenge a member of the panel, he shall raise the challenge in written form and explain the causes therein, and attach relevant evidence if necessary.
7. Manners of Examination
For a request for reexamination, the panel may conduct examination in written form, by oral proceedings, or in both ways.
In any of the following circumstances, the panel shall issue Notification of Reexamination (including Notification of Oral Proceedings for Request for Reexamination) or take oral proceedings:
(1).where the decision of rejection is intended to be upheld;
(2).where the decision of rejection can be revoked on the condition that the petitioner makes amendments to the application document in accordance with the relevant provisions of the Patent Law, its Implementing Regulations and these Guidelines;
(3).where further evidence or explanation is required to be submitted by the petitioner; or
(4).where new grounds or evidence that have not been provided in the decision of rejection need to be introduced.
In the reexamination procedure, the petitioner for reexamination may request for oral proceedings and explain the reasons therefore to the Patent Reexamination Board. The request shall be submitted in written form. The petitioner for reexamination may request for oral proceedings based on any of the following reasons:
(1).there is a need to explain the facts or causes to the panel; or
(2).there is a need to demonstrate a material object.
Where the petitioner for reexamination requests for oral proceedings, the panel shall decide whether to take oral proceedings in accordance with the needs of the case.
8. Request for Restoration of Right
8.1 Circumstances for request for restoration of right
(1).Where a time limit prescribed in the Patent Law or these Implementing Regulations or specified by the Patent Reexamination Board is not observed by a petitioner because of force majeure, resulting in that the request for reexamination is deemed to have not been submitted, is not accepted or is deemed to have been withdrawn, it or he may, within two months from the date on which the impediment is removed, at the latest within two years immediately following the expiration of that time limit state the reasons, attach the relevant certifying documents and request the Patent Reexamination Board to restore its or his rights.
(2).Where a time limit prescribed in the Patent Law or these Implementing Regulations or specified by the Patent Reexamination Board is not observed by a petitioner because of any other justified reason, resulting in that the request for reexamination is deemed to have not been submitted, is not accepted or is deemed to have been withdrawn, it or he may, within two months from the date on which the impediment is removed, state the reasons and request the Patent Reexamination Board to restore its or his rights.
8.2 Formalities
To request for restoration of right, the petitioner shall submit a request for restoration of right within the specified time limit, state the reason, and attach the relevant supporting documents if necessary.
The petitioner shall use the form of Request for Restoration of Right prescribed by the patent administration department under the State Council and fill in the items in accordance with the nodes.
Where the petitioner requests for restoration of right in the above Item (2), it or he may pay the fee for restoration of right, i.e., 1000 RMB, at the same time. The fee for restoration of right cannot be reduced and exempted.
At the time of requesting for restoration of right, the petitioner shall go through the corresponding formalities that shall have been completed before the loss of right, and eliminate the cause that leads to the loss of right.
9. Suspension of Reexamination Procedure
A request for suspension of the reexamination procedure shall be filed before the flow management department of the Patent Office.
With respect to patents in the reexamination 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 Reexamination Procedure to notify the petitioner of the starting date and expiry date of the duration of the suspension of procedure.
10. Changes in Bibliographic Data
The change in the bibliographic data during the reexamination 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.
11. Termination of the Reexamination Procedure
In any of the following circumstances, the reexamination procedure will be terminated:
(1).where the request for reexamination is deemed withdrawn from lack of response within the time limit;
(2).where the petitioner has withdrawn the request for reexamination before a reexamination decision is made;
(3).where the request for reexamination that has been accepted is rejected for inconformity with the requirements of acceptance; and
(4).where the petitioner is not satisfied with the reexamination decision but no legal proceedings are instituted before the People’s Court within the specified time limit or the reexamination decision is upheld by an effective judgment of the People’s Court.
12. Judicial Examination
Where a petitioner is not satisfied with the reexamination decision 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.
1.Fee.pdf（Downloads）
2.Notes for Oral Proceedings.pdf（Downloads）
3.Provisions on Foreign Applicant in the Guidelines for Patent Examination.pdf（Downloads）
- Reexamination Procedure
According to the Article 41 of the Chinese Patent Law, where an applicant for patent is not satisfied with the decision of the patent administration department under the State Council rejecting the application, the applicant may request the Patent Reexamination Board to make a reexamination. The decision of rejection that a reexamination request may be filed includes the decision rejecting the application during the preliminary examination and substantive examination procedures.
The reexamination procedure is a relief procedure initiated by the applicant who is not satisfied with the decision of rejection of the application by the Patent Office; meanwhile, it is a continuation of the patent examination procedure. The workflow chart is shown as follows:
(2) Litigation Procedure (Reexamination)
Where a petitioner or patentee is not satisfied with the reexamination decision of the Patent Reexamination Board, it or he may, within three months from the date of receipt of the notification, institute legal proceedings in the Beijing First Intermediate People's Court.
Where any party is not satisfied with the judgment or ruling made by the Beijing First Intermediate People's Court, it or he may, within 15 days from the date of receipt of the paper of judgment or within 10 days from the date of receipt of the civil order, institute legal proceedings in the Beijing Higher People's Court.
Where any party is not satisfied with the effective judgment or ruling made by the People’s Court, it or he may appeal it to the original People’s Court or the People’s Court at the next higher level, but the judgment or ruling is not stopped to be executed.
With respect to the case where the petitioner fails to institute legal proceedings after losing of the first instance or the case where the petitioner loses the second instance, the Patent Reexamination Board shall enforce the effective judgment, and establish a new collegiate panel to make a decision again.
- Invalidation Application
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.
1.Provisions on Foreign Applicant in the Guidelines for Patent Examination.pdf（Downloads）
2.Notes for Oral Proceedings.pdf（Downloads）
3.Measures for Accelerating the Examination of Cases Concerning Invalidation by the Patent Reexamination Board.pdf（Downloads）
4.Request for Accelerating Examination on Cases Concerning Patent Invalidation.doc（Downloads）
- Invalidation Procedure
The examination procedure of a request for patent invalidation is a patent authorization procedure for the re-cognizance of the validity of the accused patent right .It is made by the Patent Reexamination Board and based on considering both the observations and evidences submitted by the petitioner and the patentee. The specific workflow is shown as follows:
