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Linda Liu & Partners

 
The patent invalidation procedure is a procedure initiated by an interested party to challenge the validity of a Chinese patent. It requires the participation of both the patentee and the person requesting invalidation of the patent (the petitioner), and involves a trial of the case by the Patent Reexamination Board (the PRB) within the administrative powers granted by the law. In invalidation proceedings, both parties usually submit evidence to the PRB to support the alleged facts and grounds. Only when the evidence satisfies certain formal and substantive requirements and is admitted by the PRB, will it influence the trend of the case.

It is ubiquitous in practice that evidence is not allowed by the PRB because the party concerned does not fully know about the stipulations on, and examination criteria for, the burden of proof, the time limits for submitting evidence and other important conditions that should be met by the evidence. Inadequate knowledge of these aspects makes the evidence, which otherwise could have been favorable to the party concerned, turn out to have no positive influence on the PRB’s decision. In addition to the dual nature of invalidation proceedings as administrative proceedings and civil court proceedings, this phenomenon can also be attributed to the special rules of evidence arising from the fact that most of the evidence used in invalidation proceedings involves technology. A summary of the rules of evidence will help an interested party avoid detours on the road to acquirement and submission of qualified and strong evidence, and thus, win the case.
 
Stipulations on the rules of evidence for patent invalidation procedure are rather limited, and are found in Rules 65¹ and 67 ²of the Implementing Regulations of the Chinese Patent Law, which relate to the formal requirements for submitting a request for invalidation and to the time limits for adding reasons or supplementation of evidence, as well as provisions scattered through chapters 3-8 in part IV of the SIPO’s Guidelines for Patent Examination (Guidelines). In dealing with concrete cases, the PRB sometimes also uses rules and principles of civil litigation and administrative proceedings for reference. This author summarizes the current general stipulations on evidence adducing as below.
 
I. Allocation of Burden of Proof

In deciding the allocation of the evidential burden in invalidation proceedings, the PRB primarily adopts the principle that “He who is affirming must prove”, which also applies to civil litigation. The PRB will take into account the specific circumstances of the case at issue and other factors, such as the level of difficulty in acquiring the evidence by the party concerned and his ability to acquire it³.
 
[Case 1-1]

This case relates to an invalidation decision⁴ for the design patent 200430080768.1, titled “LOCK FOR VEHICLE STEERING WHEEL”. The petitioner had submitted the cover of a magazine titled “JIUZHOU NEWSLETTER ADVERTISEMENT” and copies of the relevant pages of the magazine, and submitted the original magazine during the oral proceedings, so as to demonstrate similarity between the patent in question and a design published in a domestic publication. The patentee did not admit the authenticity of the evidence and logged on the website of Jiuzhou Advisement Company during the oral proceedings. The web search found no such a magazine.
 
The collegiate panel was not in favor of the patentee’s assertion on the grounds that the patentee did not adduce evidence in proof of the falseness of the magazine within the time limit specified for the presentation of evidence and the not finding of the magazine in the website on the day of oral proceedings did not prove the inexistence of the magazine because websites of that kind were always being updated.

II. Formal Requirements for Evidence Submission

1. Time Limits

Like civil litigation, patent invalidation procedures also seek efficiency. The parties concerned, especially the petitioner, are required to submit evidence under an extremely stringent time limit. The time limit for the petitioner and the patentee to adduce and to submit evidence is stipulated as follows⁵:

(1) The petitioner shall present and supplement evidence within one month from the date of filing the request for invalidation, and may present additional evidence within the time limit specified by the PRB if the patentee presents counterevidence or amends the claims by way of combination.

(2) The patentee shall present evidence within the time limit for response specified by the collegiate panel.

(3) The time limit for the petitioner and the patentee to present a Chinese translation of evidence in a foreign language and physical evidence is the same as above.

(4) The petitioner and the patentee may present, by the closure of the oral proceedings, evidence of common knowledge of the art (e.g. a technological dictionary, technological manual and textbook) or complementary evidence like a notarial document or the original, which is to be submitted for evidence in question to meet the legal requirement.

(5) If either party cannot present evidence within the time limit as specified above due to unconquerable difficulties, he may, within the specified time limit, submit a written request for extension of the time limit.
 
Unconquerable difficulties include, among other things, force majeure, obstructed postal routes and sealed physical evidence.
 
[Case 2-1]

This case relates to an invalidation decision⁶ for the utility model patent 02275147.5, titled “ALUMINIUM FRAME-TYPE STOVE”. During the oral proceedings, the petitioner presented documents No. 6-20 (all of which are publicly published) as supplementary evidence of common knowledge, and asserted his grounds for invalidation as being that claims 1 and 2 do not possess inventiveness over the combination of documents No. 6 and 15 or the combination of documents No. 20 and 15, and that claim 3 does not possess inventiveness over the combination of documents No. 3, 1 and 17 or the combination of documents No. 3, 2 and 17.
 
In the opinion of the collegiate panel, the petitioner used documents No. 6-20 (submitted during the oral proceedings, which were held one month after the date when the request for invalidation was filed) to comment on the inventiveness of claims 1-3, so these documents did not serve to prove that a technique is common knowledge but should be deemed as new evidence as provided for in part IV of the Guidelines, especially in chapter 3, section 4.3.1(2). The collegiate panel therefore did not consider the documents or the comments on the inventiveness.
 
2. Integrity of Evidence

The party concerned should submit evidence in full form, that is, he should submit the original and all copies. If the party submits only part of a piece of evidence, such as the title page of a patent and the relevant pages of a publication, then the collegiate panel uses only the submitted part as evidence. However, pages indicating bibliographic information or those indicating copyright information of documentary evidence that are submitted by the closure of the oral proceedings will not be regarded as new evidence and will be considered by the PRB⁷.
 
A Chinese translation of evidence in a foreign language is a part of evidence, and thus should be submitted within the specified time limit, or else the evidence will be deemed not to have been submitted. In practice, if the party concerned does not submit a translation of a certain part of a piece of evidence in the form of a separate formal document but mentions the translation in the request for invalidation or in the observations, the translation will be deemed to have been submitted.
 
[Case 2-2]

This case relates to an invalidation decision⁸ for the utility model 01200943.1, titled “APPARATUS FOR DRY CONVEYING OF HIGH-TEMPERATURE COAL ASH OF COAL FURNACE”. The petitioner submitted document No. 2 (a copy of web pages introducing Beijing Guodian Futong Science & Technology Development Co., Ltd. under the State Grid Corporation of China, written in English) and held that document No. 2 demonstrated the public use of the patent in question before the filing date. It was a pity, however, that the petitioner did not submit a Chinese translation of the web pages.
 
The collegiate panel held that the evidence, as being written in a foreign language, should be deemed not to have been submitted pursuant to the stipulation in part IV of the Guidelines, particularly chapter 8, section 2.2.1, and would not be considered in the trial of the case.
 
3. Verification Formalities for Evidence Formed Abroad or in Hong Kong, Macao, or Taiwan
 
Evidence formed abroad means such evidence that is formed beyond the territory of the People’s Republic of China. Since territorial barriers must be overcome in order to verify the eligibility of extraterritorial evidence, stricter formalities are required. Specifically, the evidence should be notarized by the notary organs in the country concerned and verified by the Chinese embassy or consulate to that country, or should be subject to any verification formalities provided for in a treaty between China and the country.
 
For evidence formed in Hong Kong that needs notarization, a seal inscribed with “中华人民共和国司法部委托香港律师办理内地使用公证文书转递专用章” (meaning “Forwarding Seal Devoted to Handling of Notarial Document for Use in the Chinese Mainland by Hong Kong Lawyer Entrusted by the Ministry of Justice P.R.C”) should be affixed on the notarial document.
 
Documents of the civil registration type furnished by Macao to be used as evidence do not need notarization or verification. Evidence of other types that has been notarized by notary organs of Macao does not need verification.
 
For evidence formed in Taiwan that needs notarization, the notarial document should be subject to checks and tests by the China Notary Association or the Notary Association (or the Preparatory Group for Notary Association) of a province, municipality or autonomous region. Any notarial document to which a seal inscribed with words including “中华民国” (meaning “the Public of China”) is affixed will not be accepted by the collegiate panel.
 
In any of the following circumstances, the party concerned need not go through verification formalities for extraterritorial evidence⁹: (1) the evidence can be obtained via domestic public channels (Hong Kong, Macao and Taiwan excluded), (2) the authenticity of the evidence can be sufficiently supported by other evidence, and (3) the authenticity of the evidence is acknowledged by the opposite party.
 
A practical way to demonstrate that a publication, patent or non-patent document, used as evidence, can be obtained via domestic public channels (excluding those of Hong Kong, Macao and Taiwan) is to acquire the evidence from a domestic organ having the capability of data query and retrieval (e.g. the Information Service Department of Documentation and the Information Center of the Chinese Academy of Sciences) or from a domestic public library.
 
4. Request for Scene Inquisition

To present evidence hard to move, such as industrial equipment, the party concerned may request the collegiate panel to perform a scene inquisition besides presenting photographs and witness testimony. The request must be filed in writing within the above time limit for presenting evidence. After receiving the request, the collegiate panel has the discretion to decide whether to perform a scene inquisition in consideration of the following aspects: (1) if there is a close relationship between the case and the real evidence; (2) if the reason for not being able to provide the PRB directly with the real evidence is that it is in use, that it is not suitable for movement or dismantlement, etc.; and (3) if the party concerned has given an exact clue of arriving at the real evidence, for example, where the subject matter of inquisition is located, to whom it belongs and how to find the proprietor.
 
III. Cross-examination

Cross-examination of evidence is a procedure presided over by the collegiate panel, during which the parties concerned conduct their inquiry, explanation and argument with respect to the eligibility and probative force of evidence. The party concerned needs to pay attention to the following problems in cross-examination.
 
1. Photocopies or Duplicate

For a photocopy or duplicate of evidence (documentary evidence, physical evidence and video-audio material for example) that is submitted within the above time limit for presenting evidence, the party concerned should submit the original in the course of the cross-examination. If the original is submitted, the opposing party refuses to admit the authenticity of the photocopy or duplicate, and there is no other evidence to prove its authenticity, then the collegiate panel will not conduct the cross-examination. This suggests that the collegiate panel will not consider the evidence.
 
2. Evidence Sealed and Notarized

If evidence adduced by the party concerned has been sealed and notarized by the notary organ, the party should ensure integrity of the seal when submitting the evidence.
 
3. Physical Evidence and Video-Audio Material

If the party concerned plans to demonstrate how a piece of physical evidence works or to play a video-audio material during the oral proceedings, he should indicate this in the receipt for attending the oral proceeding and do it in the oral proceedings.
 
4. Witness Testimony

The testimony of a witness should be submitted in writing, and the witness should try to attend the oral proceedings. Written testimony made by a witness not appearing in the oral proceedings will not be taken independently as the basis for deciding the case, unless the witness really has difficulties in appearing.
 
If the party concerned wants to let a witness attend the oral proceedings, then the witness must be the person who has given the testimony, and the party must indicate, in the receipt for attending the oral proceedings, that the witness will appear. During the oral proceedings, the party concerned must submit a copy of the identity card of the witness to the collegiate panel for record. Where in the course of oral proceedings the party concerned requests the collegiate panel to allow a witness to give testimony, the collegiate panel has the right to decide whether to allow the witness to appear¹⁰.
 
¹⁰See part IV of the SIPO’s Guidelines, particularly chapter 8, section 4.3.1.
 

 （2011）