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Restriction of Examinations Ex Officio in Patent Reexamination — Analysis on the Rejected Application for Retrial of the Patent Reexamination Board (Supreme Court (2014) IP Administrative No.2 Ruling)
Peter ZHANG
Patent Attorney
Linda Liu & Partners
[Foreword]
Chapter 1, Part IV of the Guidelines for Patent Examination lists several principles for the examination of the Patent Reexamination Board, including the principle of conducting examinations ex officio, i.e., the Patent Reexamination Board may conduct examination of the cases under examination ex officio, rather than confined by the scope, grounds or evidences raised by the parties. However, the application of this principle by the Patent Reexamination Board cannot be unlimited. Through this case, we can learn more of the interpretation and definition of “obvious substantive defects” in the Guidelines for Patent Examination and the restriction from judicial departments to examinations ex officio of the Patent Reexamination Board from the different views of the Patent Reexamination Board, Beijing First Intermediate People's Court (hereinafter referred to as the First Intermediate Court), Beijing High People’s Court (hereinafter referred to as the Beijing High Court) and the Supreme Court of the People’s Republic of China (hereinafter referred to as the Supreme Court).
[Introduction]
The basic information of this case is shown in the chart below:
Therein, decisions and judgments during the examination of the present application are listed as follows:
As shown in the examination history of the present application, the Patent Reexamination Board adopted Reference 1 cited by the original examination and used a ground the original examiner in the Patent Office had not involved, i.e., the application does not possess inventiveness, and sustained the Decision of Rejection. Therefore, the point of issue of the case is that based on the reference document cited by the original examination, whether or not the Patent Reexamination Board can conduct examination by going beyond the grounds the Decision of Rejection relied on.
The Patent Reexamination Board asserted: such practice is time-saving for the parties and can prevent the case from repeating between the substantive examination and reexamination procedures. Furthermore, according to the provisions of the Guidelines for Patent Examination, the Patent Reexamination Board may examine obvious substantive defects that the Decision of Rejection did not mention under examination ex officio2.
The court of first instance (First Intermediate Court) held: the provision concerning “examination of obvious substantive defects” in the Guidelines for Patent Examination does not comprise the examination of inventiveness, and the assertion that the Patent Reexamination Board voluntarily examining whether or not the present application possesses inventiveness belongs to “examination of obvious substantive defects” lacks legal basis. In addition, “time-saving for the parties and can prevent the case from repeating between the substantive examination and reexamination procedures” also lacks legal basis. Therefore, the Decision of Reexamination made by the Patent Reexamination Board is reversed3.
The court of second instance (Beijing Higher Court) held: the basic scope of examination of the Patent Reexamination Board in the reexamination procedure is the fact and ground that the Decision of Rejection relied on, while introducing new grounds for examination under examinations ex officio is the exceptional circumstance. The judgment of first instance equated the scope of “examination of obvious substantive defects” in the preliminary examination of invention patent with that in substantive examination, which was in lack of basis. The Patent Reexamination Board made comments based on the inventiveness prescribed in Article 22.3 of the Chinese Patent Law in its No. 30895 Decision, such ground is not an issue that is necessarily involved in the examination of the Decision of Rejection by the Patent Reexamination Board. Furthermore, the determination of inventiveness in this case does not belong to issues that a person skilled in the art with the common knowledge level of the field can achieve without in-depth investigation and verification. Therefore, the direct introduction of issue of inventiveness by the Patent Reexamination Board shall not fall into the scope of “obvious substantive defects”. In addition, the assertion of the Patent Reexamination Board of “time-saving for parties and can prevent the case from repeating between the substantive examination and reexamination procedures” cannot be the ground on which No.30895 Decision of the Patent Reexamination Board has legality. Therefore, the appeal is dismissed and the original judgment is affirmed4.
The Supreme Court held: the Guidelines for Patent Examination lists various circumstances that belong to “obvious substantive defects” in the part of “preliminary examination of patent applications for invention”, but comment on the inventiveness of invention and creation is not included therein. Although the scope of examination of“obvious substantive defects” for preliminary examination, substantive examination and the procedure of reexamination and invalidation shall not be completely consistent, yet natures of “obvious substantive defects” in the above three procedures shall be the same. It is inappropriate to extend the interpretation of “obvious substantive defects” listed by the Guidelines for Patent Examination so as to include inventiveness. Examinations ex officio of the Patent Reexamination Board belong to exception circumstances and shall be conducted in strict conformity with relevant provisions of laws and regulations. The comment on inventiveness of the disputed application is not involved in the previous Decision of Rejection and does not belong to “obvious substantive defects”; therefore, this case clearly does not belong to the circumstances where the Patent Reexamination Board can conduct examination under examination ex officio5. The application for retrial by the Patent Reexamination Board is thus rejected.
[Analysis]
The Guidelines for Patent Examination prescribes that the reexamination procedure is a relief procedure initiated by the applicant who is dissatisfied with the Decision of Rejection of the application by the Patent Office; meanwhile, it is a continuation of the examination procedure for a patent application. Therefore, on one hand, the Patent Reexamination Board normally restricts its examination to the grounds and evidence on which the decision of rejection is based, and is not obliged to undertake a comprehensive examination on the patent application; on the other hand, the Patent Reexamination Board may conduct examination ex officio on other obvious substantive defects than those mentioned in the Decision of Rejection, so as to improve the quality of the patent granted and avoid unreasonable prolongation of the examination and granting procedure6.
According the above provisions, patent reexamination shall have two attributes of “administrative relief” and “continuation of examination”. Seen separately, the two attributes conflict and contradict with each other. If the patent reexamination is conducted mainly as “administrative relief”, it is obviously inappropriate to turn the focus of examination to the continuation of examination; instead, whether or not the Decision of Rejection is reasonable shall be appraised. If the patent reexamination is conducted mainly as “continuation of examination”, its attribute of “administrative relief” will obviously be heavily reduced.
The Patent Reexamination Board believes the above two attributes have different weights. It is pointed out in an article written by an expert of the Patent Reexamination Board that “provision of relief7” is the primary attribute, and “continuation of examination” is the necessary supplement of “provision of relief”. However, in the examination practice, collegial panels of the Patent Reexamination Board may overlook the difference of importance of “provision of relief” and “continuation of examination”, and even give priority to the attribute “continuation of examination” during consideration. For example, some collegial panels sometimes assert that the previous examination has examined novelty, and novelty is an extreme case of inventiveness (i.e., all features of the claims have been disclosed by the reference documents), and both novelty and inventiveness belong to the broad scope of patentability. In the broad scope of patentability, it is not inappropriate to further examine inventiveness with the same reference document on the basis that the previous examination has examined novelty. The further examination of this case during reexamination can also attribute to the above reason. In this way, in order to avoid possible prolongation of the examination and granting procedure, efficiency is pursued but fairness may be lost, causing damage to the interests of the applicant.
The author believes that the examiner shall conduct examination according to the relevant laws and regulations. However, the Guidelines for Patent Examination indeed does not provide explicit regulations regarding the scope of examination ex officio in the procedure of reexamination, which becomes one of the reasons why the scope of examination ex officio by examiners is unclear.
As shown above, the Guidelines for Patent Examination prescribes that “the Patent Reexamination Board may conduct examination ex officio on other obvious substantive defects than those mentioned in the Decision of Rejection, so as to avoid unreasonable prolongation of the examination and granting procedure”. It is thus clear that there is a prerequisite for examination ex officio. But in this case, neither the Patent Reexamination Board nor the courts gave interpretation on “unreasonable” prolongation of the examination and granting procedure. The author believes that “unreasonable” prolongation of the examination and granting procedure involves rather complicated circumstances, and it may be highly disputed regarding what is “reasonable” prolongation of the examination and granting procedure and what is “unreasonable” prolongation of the examination and granting procedure in practice. However, it is clear that the examination of “obvious substantive defects” in the application documents should be a means to avoid unreasonable prolongation of the examination and granting procedure. Nevertheless, the part of reexamination in the Guidelines for Patent Examination indeed does not specify “obvious substantive defects” in the reexamination procedure. But in this case, the Supreme Court at least holds that: it is inappropriate to extend the interpretation of “obvious substantive defects” listed by the Guidelines for Patent Examination so as to include inventiveness (see the above comments of the Supreme Court). From the vague comments of the Supreme Court, we can learn that the Supreme Court holds that “obvious substantive defects” in the reexamination procedure may have circumstances that the preliminary examination does not cover, that is, its scope is broader than “obvious substantive defects” to be examined in the preliminary examination, but inventiveness shall not belong to “obvious substantive defects” in the reexamination procedure.
Accordingly, we can at least confirm that “obvious substantive defects” to be examined in the preliminary examination also belong to contents on which the Patent Reexamination Board may conduct examination ex officio so as to avoid unreasonable prolongation of the examination and granting procedure. According to the Guidelines for Patent Examination, the examination of the obvious substantive defects of the application documents include: an application for a patent for invention whether or not obviously falls under Article 5 (contrary to the laws) or 25 (scientific discovery, rules and methods for mental activities, etc.) of the Chinese Patent Law, whether or not is not in conformity with the provisions of Article 18 (whether or not a foreigner has habitual residence in China), Article 19.1 (whether or not a foreigner entrusts a Chinese patent agency), and Article 20.1 (whether or not to conduct confidentiality examination) of the Chinese Patent Law, whether or not is obviously not in conformity with the provisions of Article 2.3 (definition of design), Article 22.2 or 22.4 (novelty and practical applicability), Article 26.3 or 26.4 (the description shall be sufficiently disclosed and the claims shall be clear), Article 31.1 (unity), Article 33 (amendments go beyond the scope of disclosure) of the Chinese Patent Law or Rules 17 to 22 (defects in drafting), Rule 43.1 (the divisional application goes beyond the scope of disclosure) of the Implementation Regulations of the Chinese Patent Law, or whether or not cannot be granted of patent right according to Article 9 (only one patent right shall be granted for any identical invention-creation) of the Chinese Patent Law.
Although China is not a nation following case law, but this case was specially brought up in the Annual Report of IP Cases (2014) of the Supreme Court and had rather strong normative effect for the enforcement of law by the Patent Reexamination Board. It can be seen from this case that the Patent Reexamination Board shall not extend the scope of “obvious substantive defects” in the examination of request for reexamination. Therefore, this case restrictively standardizes the scope of examination ex officio in reexamination. Through this case, the Supreme Court strengthened the reexamination’s attribute as the procedure for relief and stipulated the scope of examination for the continuation of patent examination and granting procedure, in which way better protected the rights and interests of patent applicants.
However, in the 4th revision of the Chinese Patent Law (draft) published by the State Intellectual Property Office (SIPO) on April 1, 2015, an article prescribing that “the Patent Reexamination Board shall examine the grounds and evidence submitted by the parties in the request for reexamination, and examine, if necessary, whether the application for a patent falls under other circumstances as provided in the Patent Law” was added. This article increases the degree of freedom of amendments ex officio by the Patent Reexamination Board and may impose potential threats to the rights of applicants. We hope that after the 4th revision of the Chinese Patent Law, the Implementation Regulation of the Chinese Patent Law can specify the specific circumstances where the above article is applicable, reflect more fair and reasonable value orientation for applicants, clarify the scope of examination ex officio in the reexamination procedure, and ensure the legitimate rights and interests of applicants. We will pay close attention to the pending 4th revision of the Chinese Patent Law.
