Being published on December 21, 2023 and coming into effect on January 20, 2024, the newly revised implementation rules of the China's Patent Law (hereinafter referred to as the New Rules) further refines the patent re-examination system. In conjunction with the new patent examination guidelines (hereinafter referred to as the New Guidelines), this article will discuss the changes brought about to the patent re-examination system by the modifications in the regulations.
I. Modifications to Restoration Period
The New Rules have improved the provisions related to the restoration period for re-examination requests in Article 6, Paragraph 2. For detailed amendments, see Table 1 below.
Table 1
Implementation Rules 2010 | New Rules |
Except for circumstances prescribed in the preceding paragraph, where a time limit prescribed in the Patent Law or these Rules or specified by the patent administration department of the State Council is not observed by a party concerned because of any other justified reason, resulting in loss of his or its rights, he or it may, within two months from the date of receipt of a notification from the patent administration department of the State Council, request the patent administration department of the State Council to restore his or its rights. | Except for circumstances prescribed in the preceding paragraph, where a time limit prescribed in the Patent Law or these Rules or specified by the patent administration department of the State Council is not observed by a party concerned because of any other justified reason, resulting in loss of his or its rights, he or it may, within two months from the date of receipt of a notification from the patent administration department of the State Council, request the patent administration department of the State Council to restore his or its rights; However, in cases of delay in the period for filing a re-examination request, a request for restoration of rights may be submitted to the Patent Administration Department of the State Council within two months from the expiry date of the re-examination request period. |
Given in current practice no notifications are issued from CNIPA for delays in requesting re-examination, the restoration requests for re-examination are filed based on Sections 2.3 (2) and (3) of Part 4, Chapter 2 of the examination guidelines 2010.
Specifically, CNIPA Re-examination and Invalidity Examination Department provided the following view in a public consultation response dated April 11, 2022 (Case No. ZLFSZX20220400179):
Within three months of receiving a rejection decision from the Patent Office, the applicant may file a re-examination request. If the re-examination request does not meet the aforementioned deadline, it will not be accepted. If a re-examination request filed within the restoration period is not accepted, the requester is allowed to request the re-examination restoration procedures within two months of receiving the non-acceptance notification. If the procedures for both re-examination request restoration and the re-examination request itself are handled within the restoration period, both requests will be processed together. (The calculation method for the re-examination request restoration period: Rejection decision issuance date + 15 days + five months.)
Specific cases illustrate two methods of submission as detailed in Table 2 comply with the aforesaid opinion from CNIPA.
Table 2
Method 1 (examination process of the patent application No. 201710328051.0) | Method 2 (examination process of the patent application No. 201610165939.2) |
Receive the rejection decision (date of issuance of the rejection decision: June 3, 2020) | Receive the rejection decision (date of issuance of the rejection decision: September 2, 2020) |
Submit the request for re-examination during the restoration period of the request for re-examination, but fail to pay or underpay the re-examination fee (date of submission: September 8, 2020) | |
Receive the request for re-examination is deemed as a notice of non-submission (date of notice issuance: October 20, 2020) | Submit the request for re-examination during the restoration period of the request for re-examination, and concurrently pay in full the re-examination fee and the fee for requesting the restoration of rights. (date of submission and payment: December 18, 2020) |
Submit the request for re-examination within two months of receiving the above notice, and concurrently pay in full the re-examination fee and the fee for requesting the restoration of rights. (date of submission and payment: December 21, 2020) |
The New Rules seems to limit the method of filing a request for restoration of re-examination rights to the second method, but this still needs to be verified in practice.
Furthermore, since the Transitional Measures for Handling Examination Business Related to the Implementation of the Amended Patent Law and Its Implementation Rules does not make special provisions for Article 6 of the New Rules, it remains to be seen whether both submission methods can still be used in the future, depending on whether the application date is before or after January 20, 2024. For details, please see Table 3. However, this viewpoint still needs to be verified by practice, and it is advisable for innovators to use the second submission method as a precaution.
Table 3
Patent applications filed on or after January 20, 2024 (including that date) | Patent applications filed before January 20, 2024 (excluding that date) |
Either Method 1 or Method 2 | Method 2 Only |
II. Modifications to Ex Officio Examination
Previously recorded in Sections 3.3 and 4.1 of Part 4, Chapter 2 of the examination guidelines 2010, the ex officio examination during the re-examination phase has been elevated in the legal status by the modification, which is detailed in Table 4.
Table 4
2010 Rules | New Rules |
Where, after re-examination, the Patent re-examination Board finds that the request does not comply with relevant provisions of the Patent Law and these Implementing Regulations, it shall invite the person requesting re-examination to submit its or his observations within a specified time limit. If the time limit for making response is not met, the request for re-examination shall be deemed to have been withdrawn. Where, after the requesting person has made its or his observations or amendments, the Patent re-examination Board still finds that the request does not comply with relevant provisions of the Patent Law and these Implementing Regulations, it shall make a decision of re-examination to maintain the earlier decision rejecting the application. Where, after re-examination, the Patent re-examination Board finds that the decision rejecting the application does not comply with relevant provisions of the Patent Law and these Implementing Regulations, or that the amended application has removed the defects as pointed out by the decision rejecting the application, it shall make a decision to revoke the decision rejecting the application, and ask the examination department which has made the examination to continue the examination procedure. | Where, after re-examination, the Patent Administration Department under the State Council finds that the re-examination request does not comply with relevant provisions of the Patent Law and these Implementing Regulations, or if there are other apparent violations of the Patent Law and these Detailed Rules in the patent application, it shall invite the person requesting re-examination to submit its or his observations within a specified time limit. e time limit for making response is not met, the request for re-examination shall be deemed to have been withdrawn. Where, after the requesting person has made its or his observations or amendments, the Patent Administration Department under the State Council still finds that the request does not comply with relevant provisions of the Patent Law and these Implementing Regulations, it shall make a decision of re-examination to reject the re-examination request. Where, after re-examination, the Patent Administration Department under the State Council finds that the decision rejecting the application does not comply with relevant provisions of the Patent Law and these Implementing Regulations, or that the amended application has removed the defects as pointed out by the decision rejecting the application and the re-examination notification, it shall make a decision to revoke the decision rejecting the application and continue the examination procedure. |
Additionally, the New Guidelines in Part Four, Chapter Two, Sections 3.3 "Preliminary Examination Opinions" and 4.1 "Examination of Reasons and Evidence" further clarify the scope of ex officio examination in re-examination. This includes an addition of "(1) Non-compliance with the provisions of Article 11 of the Implementing Regulations of the Patent Law," along with the following specific examples:
(3) Defects of the same nature as those pointed out in the decision of rejection.
...
For instance, if the decision of rejection notes that Claim 1 lacks inventiveness relative to Comparative Document 1 and common knowledge, and if the additional technical features further specified in dependent Claims 2-6 also belong to common knowledge, with none of Claims 1-6 possessing inventiveness, the collegial panel will point out that Claims 1-6 do not comply with the provisions of Article 22, Paragraph 3 of the Patent Law.
(4) Other obvious substantive defects not pointed out in the decision of rejection.
...
For example, if the decision of rejection indicates that a certain limitation in the technical solution of Claim 1 renders its working principle unclear, not complying with Article 26, Paragraph 4 of the Patent Law, and if the root cause of this issue lies in the lack of technical means in the description to solve the technical problem, the collegial panel will point out that the application does not comply with Article 26, Paragraph 3 of the Patent Law.
Furthermore, if the decision of rejection states that Claim 1 lacks inventiveness, and the unclear scope of protection of Claim 1 affects the accurate determination of distinguishing features in the inventiveness examination, the collegial panel will note that Claim 1 does not comply with Article 26, Paragraph 4 of the Patent Law.
Apart from the aforementioned situations (1) to (4), ..., for example, changing the closest prior art based on the evidence underlying the decision of rejection, or omitting some of the evidence therein.
These specific examples help the innovators better understand the boundaries of ex officio examination in re-examination, although it is still needed to be enforced and interpreted by administrative and judicial practices.
Additionally, there appears to be a conflict between Article 11 of the New Rules and Article 5 of the "Regulations on Several Issues Concerning the Application of Law in the Trial of Administrative Cases for Patent Authorization and Confirmation (I)."
Article 5 of the "Provisions (I) on Several Issues Concerning the Application of Law in the Trial of Administrative Cases Involving the Grant and Confirmation of Patents" stipulates the following:
Where a party has evidence proving that a patent applicant or a patentee forges or fabricates any relevant technical content such as specific implementation methods, technical effects and data and graphs in the specification and appended drawings against the principle of good faith, and claims accordingly that the relevant claims fail to comply with relevant provisions of the Patent Law, the people's court shall support such a claim.
The term "relevant provisions of the Patent Law" referred to here is explained in one article by the judges from the Supreme People’s Court of China, Lin Guanghai, Li Jian, Du Weike, and Wu Rong. Their explanation is as follows:
Article 5 sets out the legal consequences of the patent applicant or patentee fabricating or concocting technical content in the patent description and drawings. In the judicial practice of administrative cases for patent authorization and confirmation, there are instances to a certain extent where patent applicants or patentees violate the principle of honesty and credit, fabricating or concocting technical content in the description and drawings. This situation is particularly prominent in fields like chemistry, medicine, and materials, which require experimental data verification, and seriously disrupts the normal order of patent applications, examination, and case adjudication. The revised Patent Law in 2020, Article 20, stipulates: "Applying for a patent and exercising patent rights shall follow the principle of honesty and credit." Article 2 of the "Measures for Regulating Patent Application Behaviors" issued by the National Intellectual Property Administration clearly states that "submitting a patent application involving the fabrication, forgery, or alteration of the content, experimental data, or technical effects of the invention or creation" constitutes "abnormal patent application behavior." To legally sanction such illegal behaviors, this article clarifies that in such cases, if a party claims that the relevant right claims do not comply with the relevant provisions of the Patent Law, the People's Court should support such claims. In judicial practice, the People's Court may apply the provisions of Article 26, Paragraph 3 of the Patent Law, determining that claims related to fabricated or concocted technical content should be declared invalid.
Regarding this matter, it is still needed to be enforced and interpreted by administrative and judicial practices.
III. The difference between “Original Examination Department” and “Examination Department”
Several important textual modifications are included in the New Rules and Guidelines, such as modifying the "Patent re-examination Committee" to the "re-examination and Invalidation re-examination Department," and the "maintain the decision of rejection" to "reject the re-examination request", etc, among which the modification from the "Original Examination Department" to the "Examination Department" is worthy to discuss and pay attention to.
By deleting the word “original”, the most significant change currently seems to be in the pre-examination procedure. Section 3.1, Part Four, Chapter Two of the New Guidelines stipulates:
After the re-examination request (including the attached proof documents and amended application documents) passes the formal examination, it should be transferred to the Examination Department for pre-examination, and the Examination Department should issue pre-examination opinions.
This means that the New Guidelines no longer limit the pre-examination to the Original Examination Department. On this matter, the re-examination and Invalidation re-examination Department of the CNIPA once revealed the following information in response to public inquiries (September 20, 2023, case number ZLFSZX20230901352):
Currently, CNIPA is working on optimizing the examination mechanism, and the pre-examination of invention patent re-examination requests will no longer be handled by the examiners who rejected the patent applications.
It is complied with with the prevailing practices in current patent examinations. Although some pre-examination of re-examination requests are still conducted by the original examiners, a large number of such pre-examinations are now carried out by examiners other than the original ones.
With the above adjustment, the New Guidelines also removed the provision that "pre-examination should be completed within one month after receiving the case file." Since many pre-examinations are now conducted by examiners other than the original ones, it has become challenging in current patent examination practices to ensure completion within one month, with occasional cases taking more than half a year.
Additionally, regarding the scenario that the rejection decision is revoked by re-examination, the New Guidelines adjusted the provision to "the re-examination and Invalidation re-examination Department should return the relevant case file to the Examination Department to continue the examination procedure." Temporarily, there seems to be no case where examiners other than the examiners who rejected the patent applications continue the examination procedure, so the new regulations still remain to be implemented and verified by practices.
Jian SUN
