Overview of Patent Invalidation in China

Venue for invalidation

Unlike the US, the Chinese Patent Office is the only venue for handling the patent invalidation requests.  

The invalidation decision issued by the Chinese Patent Office could be appealed to Beijing IP Court for the first-instance trial, and could be subsequently appealed to the IP Tribunal of the Supreme People’s Court.

Grounds for invalidation

For your reference, here are the grounds we could use to invalidate Chinese invention or utility model patents which are not in conformity with Chinese patent law.

1. Articles 22 (novelty, inventiveness, practical applicability);

2. Paragraph 3 (enablement requirements) and paragraph 4 (Claims should be definite and supported by specification) of Article 26;

3. Article 33 (amendments shall not go beyond the scope of the original documents);

4. Articles 2 (invention patents should refer to a technical solution. The technical solution is an aggregation of technical means applying the laws of nature to solve a technical problem);

5. Article 5 and 25 (patentable subject matter);

6. Article 9 (same invention double patenting);

7. Article 20 (invention made in China should obtain a Foreign Filing License before filing outside China);

8. Paragraph two of Rule 20 (independent claim should include all essential features to solve technical problem); or

9. Paragraph one of Rule 43 (divisional patents should not go beyond the original disclosure of the parent case).

Procedures of invalidation

The invalidation proceeding before the Chinese Patent Office usually lasts for 5-7 months

After receiving the invalidation request, the Chinese Patent Office will transfer it to the patentee and give the patentee a certain time to respond. After receiving the response from the patentee, the Chinese Patent Office forwards the response to the petitioner and at the same time arranges an oral hearing. The oral hearing can be conducted in the absence of the patentee.

The Chinese Patent Office may allow both parties to submit additional statements within a specified time limit after the oral hearing, but the new reasons and evidence cannot be added.

Decision of invalidation

The possible decision results of an invalidation proceeding are 1) declaring the patent invalid in its entirety; 2) declaring the patent partially invalid; and 3) maintaining the patent valid.