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Linda Liu & Partners
Patent Department

 
As both domestic and foreign corporations increasingly realize the importance of the Chinese business market, these corporations pay more and more attention to the enforcement of patent rights in China.  This increased focus on the enforcement of patent rights has resulted in an increasing number of infringement disputes.  When a company is accused of infringing a patent right, the allegedly infringing company usually initiates a patent invalidation procedure.  The alleged will request the Patent Reexamination Board (hereinafter referred to as "PRB”) to declare the patent right it has been accused of infringing invalid. It is normal business practice for an allegedly infringing company to attempt to invalidate the patent right held by the accusing company in order to avoid charges of infringement.  Patent invalidation in China has become a hot matter for more and more companies.  This article briefly introduce several matters belonging to this procedure for foreign companies to better understand the Chinese patent invalidation procedure,
 
I. Petitioner eligibility for invalidation

According to Article 45 of the Chinese Patent Law, any entity or individual may make a request to declare a patent right invalid to the PRB.  A patentee can also file a request for invalidation of his own patent, despite the strict limitations in the Guidelines for Examination for this particular situation. (Guidelines for Examination, Part 4, Chapter 3, 3.2: where the patentee files a request for invalidation of his own patent right and requests to invalidate the whole of the patent, the evidence submitted is not a publication, or not all the patentees of the patent have joined in filing the request for invalidation, his request for invalidation shall not be accepted.)  Therefore, there are no restrictions in Chinese Patent Law on the eligibility of petitioners filing a patent invalidation request. Any natural person, legal person or other organizations having qualification of a civil subject can be a petitioner to file a patent invalidation.
 
The relationship between companies in the same field is most often that of competitors, and sometimes, also that of partners.  Suppose a company finds that a product being or about to be manufactured may fall under the scope of protection of a patent right owned by the company’s partner. The company is at risk of being accused of infringement by the partner.  If the potentially infringing company wants to clear that patent right, but does not want to directly collide with the partner, potentially infringing company usually files a request for invalidation in the name of a third party instead of itself.  The advantage thereof is to avoid infringement litigation between the company and the patentee.  If the validity of the patent is ultimately maintained, the company still has the possibility to take initiative countermeasures, such as modifying the product or ceasing manufacture of the product to avoid infringement.
 
II. Grounds for invalidation

According to Rule 64.2 of the Implementing Regulations of the Chinese Patent Law, the following reasons can be used as grounds for invalidation:

● Novelty, inventive step, and utility (Articles 22.2, 22.3 and 22.4);
● Duplicate grants for the same invention (Article 9; Rule 13.1);
● Unclear claims (Rule 20.1);
● Lack of essential technical features (Rule 21.2);
● Insufficient information disclosed by the description (Article 26.3);
● Lack of support of the description (Article 26.4); and
● Amendments to the application documents going beyond the scope disclosed by original claims and description (Article 33).
 
If invalidation of a patent is requested, the following must be provided:, specific grounds for invalidation (Articles or Rules listed above) should be explicitly specified. The claims to be invalidated should also be explicitly specified.  Finally, a detailed description of the grounds for invalidation should be provided, to show why the claims do not comply with these Articles or Rules.  According to the provisions of the Guidelines for Examination, when filing a request for invalidation:

1. If a petitioner fails to provide specific grounds for invalidation by not explicitly specifying detailed Articles or Rules; or

2. If evidence is filed together with the request, but the petitioner fails to provide a detailed description of the ground for invalidation based on all of the evidence; or

3. If the petitioner fails to specify which evidence corresponds with each specific ground,
the request for invalidation will not be accepted.
 
For example, if a petitioner merely points out that a patent does not comply with a certain Article or Rule, or only notes that a claim does not involve inventive step over evidence one and two without including a detailed description, the request for invalidation will not be accepted.  Even if a request is accepted inadvertently, in the subsequent procedure such as the PRB examining the request, the request will be directly rejected due to inappropriate acceptance.
 
A petitioner also cannot merely provide a detailed ground from, for example, a technical viewpoint, without specifying detailed Articles or Rules. In general, if a request for invalidation is filed, the description of the ground for invalidation should satisfy the following three requirements:

1. Which claim(s) should be invalid;

2. Which Article(s) or Rule(s) has been violated; and

3. Why this claim should be invalid based on this Article or Rule.
 
The degree to which the ground for invalidation should at least be described is that a person having both common knowledge of the technical field and common knowledge of patent law could clearly understand why the claims do not comply with the provisions of the Patent Law or Implementing Regulations.
 
The degree to which the grounds for invalidation are described varies depending on the situation.  In case of the ground for invalidation being sufficient evidence to invalidate the patent right, it is preferable to describe the ground for invalidation in detail.  In the case where the grounds for invalidation are not sufficient enough, it will be better if the grounds for invalidation are not described in detail, because it will be easier for the patentee to find further argumentation based on points from the detailed description of the patent invalidation grounds.
 
III. Addition of a ground for invalidation or evidence supporting an invalidation

The petitioner for invalidation can only add a ground for invalidation, or evidence supporting the invalidation petition if the claims have been amended by the patentee. In this situation, the petitioner for invalidation can only add a ground for invalidation or evidence supporting the invalidation for the amended claims, within the time limit specified by the PRB.
 
Otherwise, neither a ground for invalidation, nor evidence, can be added after the request has been filed for more than one month.  Furthermore, the following cases will be deemed by the PRB as the addition of a ground or evidence:
 
1. Hypothetical: When a request for invalidation of a patent is originally filed, for example, claim one of a patent is deemed as unclear by the petitioner due to an unclear technical feature, Feature A.  Feature A does not comply with Rule 20.1 of the Chinese Patent Law.  After the request for invalidation has been filed for one month, such as when the oral hearing is held, the petitioner alleges that the same claim, claim one, is also not clear due to a second technical feature, Feature B.  The newly added ground, that claim one of the patent is unclear due to the technical Feature B, will not be considered by the PRB, even though neither a new claim nor a new Article or Rule is involved.
 
2. When a request for patent invalidation is originally filed, for example, claim one is deemed to have a lack of novelty by the petitioner due to the technical solution of claim one was disclosed by part A of the evidence.  After the request has been filed for one month, such as during the oral hearing where the petitioner alleges that claim one also lacks novelty due to part B of the same evidence discloses the technical solution of claim one.
 
Under the rules of the PRB, the newly added ground for the invalidation of the patent, that claim one of the patent lacks novelty due to part B of the evidence, will not be considered by the PRB even though neither a new claim nor new evidence is involved.  There is one exception to this rule: if the purpose of the addition of part B is to interpret part A of the evidence, part B may be taken into consideration by the PRB.
 
3. When a request for invalidation of the patent is originally filed, for example, claim one is deemed to lack inventive step by the petitioner due to a combination of evidence 1 and 2. After the request has been filed for one month, such as during the oral hearing where the petitioner alleges that claim one also lacks inventive step due to the combination of evidence 1 and 3, or due to the combination of evidence 3 and 4. This situation supposes that all of the evidence, evidence one through four, has been filed simultaneously with the patent invalidation request.
 
For the newly added ground, that claim one lacks inventive step over evidence one and three, or over evidence three and four, the newly added ground would not be considered by the PRB, even though neither new claim nor new evidence is involved.
 
Case 1: No. 9817 Decision on Request for Invalidation by PRB

This case deals with a patent of an invention in the field of chemistry. When the request for patent invalidation was originally filed, the following grounds were included with the filing:

1. Claim 1 and dependent Claims 2 through 17 lack an essential technical Feature A necessary to solve the technical problem described (Rule 21.2);

2. Claims 18, 19 and 21 fail to further define Feature A to solve the technical problem of Claim 1, and so lack the essential technical feature  (Rule 21.2);

3. The description does not sufficiently disclose the invention due to a lack of detail in Features B through E (Article 26.3).
 
In the oral hearing the petitioner seeking to invalidate the patent further alleges that: Claims 1 to 21 lack the essential technical Feature F (Rule 21.2), and the description fails to describe the meaning of the technical term G.  The invention is not sufficiently disclosed because one skilled in the art cannot implement the invention because of the failure to describe the meaning of the technical term in G (Article 26.3).  However, in the oral hearing, the PRB notifies the petitioner that the newly alleged grounds (above) will not be considered, since they are alleged beyond the time limit prescribed by the Rule 66 of the Implementing Regulations of the Chinese Patent Law, and does not belong to the exception which the PRB is currently considering.
 
Under this scenario, when filing a request for patent invalidation it is preferable for the petitioner seeking to invalidate a patent to include any possible ground for patent invalidation in the patent invalidation request.  Furthermore, care should be taken to avoid the negative effect of this case. Even though new Articles, Rules, evidence, or new claims are not involved in the addition of the ground beyond the time limit prescribed by the Chinese Patent Law, there is still a high possibility that the grounds are not taken into consideration.  On the contrary, before the current Guidelines for Examination was amended in July 2006, the new ground added in the above manner in the situation where neither new Articles or Rules or evidence nor new claim is involved would be considered by the PRB. 
 
In this situation the patentee should pay more attention to, and refuse to accept any newly added ground which is not compliant with the related provisions.
 
During the patent invalidation procedure if only a patent number or title of a cited reference is mentioned in the request, without filing the document of the cited reference, the cited reference will not be considered by the PRB.  If only the cited pages are filed as evidence, instead of the entire document, the PRB will not obtain all of the pages itself; only the pages filed by the petitioner seeking to invalidate the patent will be considered by the PRB.  Other pages or documents filed after the time limit has expired usually will not be considered, except for pages containing information detailing information such as publication date or copyright.  One should file all the pages associated with a document to avoid the problems noted above.
 
For evidence in a foreign language, the Chinese translation of all of the possible useful parts should be filed. The part of evidence of which the Chinese translation is not filed, or not filed within the prescribed time limit, will not be considered by PRB.
 
IV. Amendments to the claims

The patentee can amend claims within a prescribed time limit during a patent invalidation process under the provisions set forth in the Guidelines for Examination. The claims can be amended only with respect to a combination and deletion of claims, and deletion of technical solutions.
 
The combination of claims in the patent invalidation procedure is such that two or more dependent claims, depending on the same independent claim without referring to each other, are combined into a single claim. The deletion of claims in the patent invalidation procedure is such that one or more claims, such as independent claims or dependent claims, are deleted from the claims.  The deletion of technical solutions is such that one or more technical solutions are deleted from several technical solutions existing in parallel in the same claim.
 
Case 2: No. 10354 Decision on Request for Invalidation by PRB

This case deals with a patent of an invention in the field of chemistry. and shows what happens when there are amendments to claims during a patent invalidation procedure. The three claims at issue in the patent are:

1. A lead-free solder alloy comprising 0.1-2 wt% Cu, 0.002-1 wt% Ni and the remaining percent Sn.

2. A lead-free solder alloy according to claim 1, with a percentage weight of Cu between 0.3 to 0.7 percent.

3. A lead-free solder alloy according to Claim 2, with a weight percentage of Ni between 0.04 to 0.1 percent.
 
In the request for invalidation, the petitioner submitted that claims 1 and 2 are not novel.  In response to the invalidation request, the patentee makes amendments to the claims in order to overcome the defect of lack of novelty. The amended claims are: original claim 2 is combined into original claim

1, while the upper limit of the weight percentage of Ni is changed from 1 wt% to 0.1 wt%.

1. A lead-free solder alloy with 0.3-0.7 wt% Cu, 0.002-0.1 wt％ Ni and the remaining percent Sn.

2. A lead-free solder alloy according to claim 1, with a weight percentage of Ni between 0.04 to 0.1 percent.
 
The PRB found the above amendments were unacceptable for the following reasons: The range of numerical value defined in the claims is an entire discrete solution, rather than a continuous solution.  The deletion of part of the range of numerical values will result in a change of the technical solution defined by the invention.  The changed technical solution does not exist in the claims of the patent, and is beyond the scope of original claims of the patent. Therefore, such amendments changing the technical features in the claims, instead of the deletion of the claims prescribed in the Guidelines for Examination, which does not belong to any amendments among the deletion and combination of claims and the deletion of technical solutions. Thereby, such amendments changing the technical features of the claim are not acceptable.
 
From this case, it can be concluded that, the amendments to claims during a patent invalidation procedure are strictly limited. The amended claims should not go beyond the scope of the claims upon which the patent was granted. Considering the stability of the patent in a patent invalidation procedure, when drafting claims it is preferable to define each possible claim with a narrower description in the dependent claims.
 
V. Notarization and legalization for foreign evidence, including evidence from Hong Kong, Macao and Taiwan

Foreign evidence refers to the evidence established outside China, such as publications issued outside China, according to the provisions of the Guidelines for Examination.  Foreign evidence, including evidence from Hong Kong, Macao and Taiwan, usually should be notarized and legalized, unless:

● The foreign evidence can be publicly obtained in China, for example through a library of a university;
● Authenticity of the evidence can be proven by other evidence; and
● The authenticity of the evidence is admitted and confirmed by the counterparty.
 
The purpose of notarization and legalization is to assert the authenticity of evidence. Notarization and legalization only indicating that a duplicate is identical to the original copy is usually meaningless, because such a notarization and legalization cannot prove the authenticity of evidence.
 
Case 3: No. 5424 Decision on Request for Invalidation by PRB

This case deals with notarization and legalization of foreign evidence.  In the patent invalidation procedure, evidence number two through six were filed by the petitioner as foreign evidence, and more particularly, as foreign publications.  In the oral hearing, the original copies of evidence two through six are filed by the petitioner, but the corresponding notarizations and legalizations of foreign evidence two through six were not filed. Because the notarization and legalizations were not filed, the patentee doubted the authenticity of foreign evidence two through six.
 
In the decision, the PRB held that in this case where the patentee doubts the authenticity of foreign evidence two to six, because the evidence originates from outside of China, the evidence should be notarized and legalized, even if the original copies have already been filed.  The petitioner seeking to have the patent invalidated, has neither filed the notarization and legalization of the evidence, nor filed other evidence to prove the authenticity of foreign evidence two through six. Because the petitioner seeking to have the patent invalidated did not file a notarization and legalization of foreign evidence two through six, foreign evidence two through six will not be considered by the PRB due to lack of evidence to prove their authenticity.  In this instance, the petitioner did not agree with the PRB and appeals to the court. The court, however, concurs with the PRB and deems that foreign evidence two to six should not be considered because foreign evidence two through six was not notarized and legalized.
 
The decision of this case was made several years ago. At that time, the court  usually finds that foreign evidence should not be considered if it is not notarized and legalized.  Recently however, the PRB and court are more flexible regarding the notarization and legalization of foreign evidence whose authenticity can be confirmed.
 
Case 4: No. 8093 Decision on Request for Invalidation by PRB

This case describes a situation where notarization and legalization of foreign evidence was not necessary.  During the patent invalidation process, the petitioner filed a duplicate copy of a foreign journal as evidence one without obtaining notarization and legalization for the foreign journal. No original copy of the foreign journal was filed by the petitioner seeking to invalidate the patent. The foreign journal was owned and made available by a foreign library, and the petitioner borrowed it from this foreign library via the State Library of China interlibrary loan system. The petitioner obtained the copy of the foreign journal from the State Library of China, and filed the copy of the foreign journal, which was stamped with the seal of the State Library of China during the oral hearing. The copy of the foreign journal was submitted during oral hearings in an attempt to prove the authenticity of copy of the foreign journal, evidence one.  The patentee defending the validity of their patent, doubted the authenticity and validity of the copy of the foreign journal, evidence one, because of the absent notarization and legalization.
 
The PRB held that it was not necessary for the copy of the foreign journal, evidence, one to be notarized and legalized. Even though this journal was not a domestic publication, and had been collected by a foreign library, because any person in China could easily obtain this foreign journal via the State Library of China, a public organization, the foreign journal did not have to be notarized or legalized.  The foreign journal could be obtained via public organizations inside of China. Though the patentee doubts the authenticity of evidence one, the copy of the foreign journal, there is no sufficient reason to justify the questions about the authenticity of the foreign journal With this logic the PRB confirmed the authenticity of evidence one and allowed its use it to assess the patentability of the patent.
 
On appeal, the court agreed with the opinion of the PRB. Even though a provision existed in the related laws and regulations that foreign evidence should be notarized and legalized, the court held that the spirit of this provision was to verify and confirm the authenticity of foreign evidence.
 
In this case, firstly, it is very common to borrow a journal collected by a foreign library via a domestic public library including the State Library of China. The petitioner to invalidate the patent succeeded in proving that evidence one is obtained from the State Library of China, and anyone can obtain evidence one in China through a public and normal approach.
 
Secondly, both the foreign library collecting this journal and the State Library of China are public organizations providing information to the public.  There is no evidence to support the idea that these two libraries would provide materials that were not authentic for the benefit of themselves, or for some other unfair purpose.  The authenticity of evidence one filed by the petitioner can be verified and confirmed from the format thereof, which is in compliance with the provisions in related laws and regulations concerning introducing this kind of evidence.
 
Thirdly, if the patentee, on the other hand, doubts the authenticity of evidence one, he or she can verify whether this foreign journal can be obtained in the same manner as that the petitioner has claimed to obtain the foreign journal. In the event that the patentee cannot provide counterevidence or sufficient reasons why the foreign journal is not obtainable in the way the petitioner says the foreign journal is, the authenticity of evidence one is unchallenged.
 
According to Article 15 of the “Opinion on Improving Intellectual Property Trial to Provide Judicial Guarantee for Establishing an Innovative State” dated January 17, 2007 by the Supreme Court, as for the foreign evidence whose authenticity can be preliminarily confirmed, no notarization and legalization is necessary unless one party can provide valid doubt about the authenticity of the foreign evidence, and the other party fails to provide a valid response. 
 
Theoretically, the above Opinion has no restriction on the PRB or the court. The PRB and the court have held that no notarization and legalization are necessary if the authenticity of evidence can be proven through the use of the evidence itself, or through other evidence. 
 
The evidence may be not considered even if both notarization and legalization are made when the only purpose of the notarization and legalization is to prove the consistency between the duplicate and the original copy with no other evidence submitted to prove the authenticity of the original copy.
 
As for foreign evidence, if the evidence has information about the author, publish company, publication date, ISBN (International Standard Book Number) which show that the evidence is a publication, the evidence will probably be considered by the PRB.
 
Some other suggestions for dealing with proof of validity of foreign evidence includes

1. If the evidence cannot be publicly or readily obtained in China via public means (for example, via a public library), the evidence should be notarized and legalized, and original copies should be filed during the oral hearings to ensure the evidence to be considered; and

2. If the evidence can be obtained through a foreign public library, a duplicate of the evidence should be obtained from the library, and documents should be provide by the library to prove that the duplicate was obtained from the library, along with a notarization and legalization of both the duplicate of the evidence and the statement from the library that the duplicate copy is an authentic copy of the original piece of evidence..
 
For evidence originating from Hong Kong, Macao and Taiwan, there are special provisions in the Guidelines for Examination,  The requirements for evidence originating from Hong Kong, Macao and Taiwan are slightly different from the requirements for foreign evidence.
 
The above should be reviewed prior to submission to ensure all of the requirements for submitting evidence are met.
 
VI. Common knowledge

There is no definition of “common knowledge” in the Guidelines for Examination.  In part II, chapter 4 of the Guidelines for Examination, there is text from which we can infer a definition of common knowledge: “for example, common means to solve the objective technical problem over the closet prior art, or technical means disclosed by schoolbooks or reference books to solve the objective technical problem”. In part IV, chapter 3 concerning the patent invalidation procedure, it states: “the PRB may determine ex officio whether a technical means belongs to common, and may introduce ex officio such common knowledge evidence as a technical dictionary, technical manual, or schoolbook into the examination.”
 
From the text quoted from the Guidelines for Examination quoted above, it is not necessary for common knowledge to be proven by evidence. If the petition or patentee alleges that a technical feature belongs to common knowledge, he or she should explain his or her assertion sufficiently, or may provide evidence to prove the assertion that a technical feature is common knowledge.  Technical dictionaries, technical manuals, schoolbooks and several other types of evidence can be used to prove a technical feature is common knowledge.
 
Two cases concerning common knowledge are detailed as below:
 
Case 5: No. 5424 Decision on Request for Invalidation by PRB

This case deals with a patent of an invention in the field of chemistry. The court addresses two questions in this case: (1) if it is necessary for the petitioner to provide evidence to prove common knowledge, and (2) what is the time limit for providing evidence for common knowledge
 
During the patent invalidation procedure, the petitioner alleged that two of the distinguishing technical features of claim 1 of the patent, and of reference 1 cited in the patent, were common knowledge.  After the oral hearing, the petitioner filed evidence seven through fourteen to prove common knowledge.  The PRB did consider evidence seven through fourteen when making a decision, and held that even though the petitioner asserts that the distinguishing technical features between claim 1 and cited reference 1 are common knowledge, the petitioner seeking to invalidate the patent fails to provide evidence to the PRB proving this assertion.  The PRB also held that the cited reference 1 does not disclose the distinguishing technical features either. Therefore, the allegation of the petitioner is unacceptable.
 
On appeal, in support of its decision the PRB asserted that evidence seven to fourteen provided by the petitioner was submitted to the PRB after the time limit prescribed in the Guidelines for Examination. The court did not agree with the assertion of the PRB that the evidence was submitted after the deadline. The opinion of the court is as follows:
 
“The purpose of evidence 7 to 14 is to prove common knowledge, which is clearly stated by the petitioner in the patent invalidation procedure. Common knowledge in the art does not serve as cited reference. Instead, it is used for determining the technical level of a person skilled in the art. The technical level is always an important factor in assessing inventive step of a claim, regardless as to whether or not there is evidence to prove it. Common knowledge, being evidence to prove the technical level of a person skilled in the art, is also always an important factor in assessing inventive step. Therefore, in the case that the petitioner clearly states that the purpose of evidence 7 to 14 is to prove common knowledge, it is not in compliance with the provisions of inventive step in Chinese Patent Law and Guidelines for Examination, if evidence 7 to 14 is refused due to the filing date thereof being beyond the time limit prescribed in the Guidelines for Examination.”
 
It can be concluded that common knowledge is within the scope known by a person skilled in the art, and that evidence to prove common knowledge should be considered regardless of the filing date thereof.  The decision on this case was made when the 2001 version of the Guidelines for Examination was in force.  In the 2001 version of the Guidelines for Examination, there is no provision concerning the time limit of providing evidence for common knowledge.  In the current, 2006 version of the Guidelines for Examination,, there is an explicit provision that the evidence to prove common knowledge should be filed before the closure of the oral hearing.  If the evidence is filed after the oral hearing, the PRB may refuse this evidence according to the provision in the Guidelines for Examination.
 
Case 6: No. 9405 Decision on Request for Invalidation by PRB

In this case, common knowledge was introduced by the PRB ex officio. In the decision on a request for invalidation, when assessing the inventive step of the patent, the PRB determined that several distinguishing technical features were common knowledge in the art, but did not provide evidence to prove their decision. The patentee did not agree with the decision by the PRB that the several distinguishing technical features were common knowledge and appealed to the court.
 
On appeal, the court did not support the allegation of the patentee. The opinion of the court is as follows:
 
“Common knowledge refers to those known by a person skilled in the art. Though it is prescribed in the Guidelines for Examination that the burden of proof should be burdened by the party introducing common knowledge, the burden of proof never means he or she must provide corresponding evidence. The purpose of the burden of proof is to determine which party should carry the burden of providing evidence if the fact of a case cannot be clearly determined. If the party having burden of proof states or explains his or her allegation in a manner sufficient for the PRB (or the court) to determine that the alleged technical feature belongs to common knowledge, the burden of proof of that party is completed. It is unnecessary for the PRB to request that party to further provide evidence to make a decision.”
 
It can be concluded from this case that if a technical feature is alleged as common knowledge, even though it is difficult to provide evidence to prove it. An alternative approach is to state that the technical feature belongs to common knowledge sufficiently. It is preferable for the petitioner, however, to provide evidence such as technical dictionaries, technical manuals, schoolbooks, or other sources of common knowledge to prove that the technical feature belongs to common knowledge.
 
 
VII. Evidence from the internet

As the internet becomes more and more popular, providing evidence derived from the internet becomes a more common occurrence in patent invalidation procedure. Such evidence is rarely accepted by the PRB because it is easy to be modified and deemed not to be reliable. The PRB is in the process of preparing rules on how to accept evidence from the internet.
 
Two cases showing how evidence from the internet is dealt with are provided below:
 
Case 7: No. 9345 Decision on Request for Invalidation by PRB

This case relates to a patent of design titled “computer case (MG-760)”, filed on November 3, 2003, and numbered 200330116093.7. In the patent invalidation procedure, the petitioner filed a notarized document, with the procedure of the notary that browsing and printing the pages of a website was recorded and notarized, and the printed pages from the website which including some pictures similar to the patent “compute case (MG-760)” attached to the notarized document.  The notarized printed pages from the website were dated September 22, 2003.
 
The PRB deemed that the notarized printed pages of the website only prove the content displayed on the website pages when the notarization was made. The notarized pages cannot prove whether the information contained on the pages of the website are true or not.  In the case where there is no other evidence to further prove that the information or content of the website pages are accurate, the pages of the website filed by the petitioner cannot be used for making a legal decision about the validity of the patent. That is, the pages of the website could not be used by the petitioner to prove to the PRB the following fact: Before the filing date of the patent on September 22, 2003,, pictures similar to the patent “computer case MG-760” had been publicly published on the pages of the website.
 
On appeal, the court agreed with the holding of the PRB. The opinion of the court is as follows:
 
“The evidence filed by the petitioner belongs to information published via the internet. Though the petitioner provides a notarization for this evidence, since the information published via the internet is easily modified, this evidence can merely prove the content displayed on the pages of the website on the date when the notarization is made. In the case that no other evidence is provided to further prove it, the authenticity of the content displayed on the pages of the website cannot be confirmed, and thereby this evidence cannot prove that the patent has already been published on the website before the filing date of the patent.”
 
Case 8: No. 7810 Decision on Request for Invalidation by PRB

This case relates to a patent of a utility titled “double chromatic monitors of mobile phone”, filed on November 27, 2003, and numbered 200320122178.0. During the patent invalidation proceedings, the homepage of a website named CNII was filed as evidence by the petitioner seeking to invalidate the patent. The website evidence contained information about parameters of a mobile phone model A118.  On the submitted evidence, the printout of the homepage, it showed that the mobile phone A118 had been available in the market in October 2003.  The petitioner also filed evidence used for notarizing the homepage evidence.
 
The PRB held that, the evidence showing a printout of the homepage was an advertisement of a mobile phone on the internet, and that the producer and maintainer of this homepage could arbitrarily modify the homepage, and that it was not reliable. Because the homepage evidence could be altered, the homepage evidence submitted by the petitioner was not considered by the PRB.
 
On appeal, the court agreed with the PRB’s decision. The opinion of the court is as follows:
 
“Though the evidence is notarized, the content notarized can merely prove that the information was displayed on the homepage on the date when the notarization was made. As for the authenticity of the content itself, it is not notarized. In the case that the patentee does not accept this evidence and there is no other evidence to prove it, the authenticity of the content displayed on the homepage cannot be determined.”
 
From the holding in this case, it can be concluded that the evidence from the internet is usually refused if there is no other evidence to prove that the content of the webpage is authentic and has not been altered. Therefore, it is preferable to file evidence in several formats (e.g., website pages, publications, receipt or invoice) in order to prove-up the authenticity of evidence derived from websites.
 

（2008）