Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
The Amendment Tendency Relating to Article 46 of the Chinese Patent Law
Linda Liu & Partners
During the process of amending the Chinese Patent Law this time, it has been discussed about whether it is necessary to newly establish a patents court or intellectual property court, and whether it is still necessary that the Patent Reexamination Board appears as the defendant in a litigation against the decision by the Board. instituted by one who is not satisfied with a decision on a request for invalidation. Up According to the draft for examination of the revised draft of Chinese Patent Law, however, the relating items is not adjusted have not been discussed .It is to be noted that the these items are adjusted in the latest revised draft of Chinese Patent Law we acquired recently. The brief explanation of the latest revised draft including the comparison between the present law and the draft are as follows will be described hereinafter in this article. Particularly, it is to be noted that, the writer still has some questions about the amendment of the law, so that I wish to list them and to discuss together with the reader, which are also list herein. if the occasion arises.
Article 46 of the present Chinese Patent Law
The Patent Reexamination Board shall examine the request for invalidation of the patent right promptly, make a decision on it and notify the person who made the request and the patentee. The decision declaring the patent right invalid shall be registered and announced by the Patent Administration Department under the State Council.
Where the patentee or the person who made the request for invalidation is not satisfied with the decision of the Patent Reexamination Board declaring the patent right invalid or upholding the patent right, such party may, within three months from receipt of the notification of the decision, institute legal proceedings in the people's court. The people's court shall notify the person that is the opponent party of that party in the invalidation procedure to appear as a third party in the legal proceedings.
Article 47 of the revised draft of Chinese Patent Law
The Patent Reexamination Board shall examine the request for invalidation of the patent right promptly, make a decision on it and notify the person who made the request and the patentee.
Where the patentee or the person who made the request for invalidation is not satisfied with the decision of the Patent Reexamination Board declaring the patent right invalid or upholding the patent right, such party may, within three months from receipt of the notification of the decision, institute an appeal in the people's court in accordance with the Civil Procedure Law of the People’s Republic of China.
The decision declaring the patent right invalid shall be registered and announced by the Patent Administration Department under the State Council.
The following are brief explanation relating to the above amendments as well as some questions arisen from them:
1. The type of litigation against the decision on a request for invalidation is changed.
According to the provisions of the present Chinese Patent Law and the Administrative Procedure Law, a litigation (the litigation for confirming an invention patent right) instituted against the administrative decision by the Patent Reexamination Board declaring the patent right invalid or upholding the patent right should belong to the scope of administrative litigation. In the revised draft, on the other hand, it is explicitly amended as “in accordance with the Civil Procedure Law”, that is, this kind of litigations will be included into the scope of civil litigation.
Question: During a judicial procedure, is it necessary to review the decision on a request for invalidation ? I wonder if the court could be directly involved in a judgment of declaring the patent right invalid or upholding the patent right?
2. “Institute legal proceedings” is amended to “institute an appeal”.
Normally “institute legal proceedings” is a procedural act instituted by the litigant in the people's court in accordance with law; while “institute an appeal” is a procedural act instituted by the litigant who refuses to accept an unenforced judgment of the people’s court of first instance within the legal time limit, requesting the next higher people’s court to judge the related facts and application of law ascertained by the lower court. That is, the examination procedure of the Patent Reexamination Board is likely to be regarded as a quasi-judicial procedure, i.e. as the procedure of first instance.
Question: Whether the decision made by the Patent Reexamination Board has the effect of a judgment of first instance?
3. The provision about the “third party” is deleted.
The phrase “The people's court shall notify the person that is the opponent party of that party in the invalidation procedure to appear as a third party in the legal proceedings.” is deleted from the article
Question: Will the court notify a third party to appear in the legal proceedings? Will the Patent Reexamination Board appear as the third party?
