Frank Mu
The new Implementing Regulations of the Patent Law (hereinafter referred to as the “new Regulations”) were promulgated on December 21, 2023, and were set to come into effect on January 20, 2024. With the gradually growing consciousness of the common people in respecting and protecting intellectual property rights, there has been a rise in irregular patent applications, fake or deliberately fabricated patent disputes through which some patent holders, applicants, or interested parties were seeking for unjustified interests or damaging the interests of others. For the purpose of curbing the potential abuse of rights in practice, the Patent Law amended in 2020 introduces the principle of good faith, according to which Rule 103.2 of the new Regulations makes some modifications regarding the request for suspension of patent prosecution & invalidation procedures for the purpose of regulating the activities in filing patent applications or exercising patent rights.
1. Examination on the request for suspension of patent prosecution & invalidation procedures being transformed into substantial examination from formality examination by granting more powers to National Intellectual Property Administration (CNIPA).
With respect to the request for suspending patent prosecution & invalidation procedures, the following two modifications are made by Rule 103.2 of the new Regulations: (1) Submission of a request for suspension to the CNIPA must be accompanied by a statement of reasons, while according to the Regulations (2010), only a request is required and a statement of reasons is not necessary. (2) The CNIPA may refuse to suspend patent prosecution & invalidation procedures if CNIPA believes the grounds for suspension are unacceptable, which is a new provision by the new Regulations.
For the scope of suspension of patent prosecution & invalidation procedures, Guideline for Examination (2001) stipulates that the scope of suspension covers all examination, reexamination, and invalidation procedures. Guideline for Examination (2006) prescribes that “where, before the request for suspension is approved, the procedure of publication or announcement that has been entered the compilation period of the gazette shall not be affected by the request for suspension”. Guideline for Patent Examination (2010) further enlarges the scope that “where, the procedure of preparation for publication or announcement has started before the request for suspension is approved, the said procedure shall not be affected by the request for suspension”.
Pursuant to Rule 103.2 of the new Regulations, Guideline for Patent Examination (2023) further prescribes some scenarios that shall not be affected by the request for suspension:
Ø Based on the examination that has been done, CNIPA can make a decision on request for invalidation;
Ø The reasons for suspension requested by the party concerned in a dispute over right ownership are clearly unfounded, neither sufficient evidences are filed that can prove the alleged ownership dispute does exist;
Ø Some evidences indicate that the interests of the other party or the public interests will be damaged if the patent invalidation procedures are suspended;
Ø Some evidences indicate that the request for suspension is filed in bad faith or inappropriately.
The amendment to Rule 103.2 of the new Regulations empowers CNIPA to substantially examine the request for suspension of patent prosecution & invalidation procedures from previous formality examination, by authorizing CNIPA to decide whether to suspend the relevant procedures.
2. The Development of suspension provisions reflect the refinement of the principle of good faith, and will be helpful in better balancing interests of related parties.
By reviewing of related provisions of the Patent Law, Implementing Regulations, and Guideline for Examination, for the request for suspension of patent prosecution & invalidation procedures, a development can be found from absolutely protecting the interests of patentees or applicants to that each party of a dispute shall exercise its rights in good faith.
In practice, an absolute protection of the interests of patentees and applicants can potentially lead to the misuse of rights or damage the legitimate interests of the other parties. For instance, for a patent invalidation dispute, the patentee may has an incentive to delay the issuance of a decision on an invalidation request thus to make corresponding infringement dispute in a status of pending as long as possible. For the other side relative to the patentee or the applicant, the new Regulations provide a means of relief against the patentee or the applicant in seeking unjustified interests.
Frank Mu
Frank Mu joined NTD in 2007 and stated his profession in intellectual property, specialized in handling tech-related IP disputes, including patent infringement, patent reexamination & invalidation, patent search & assessment, infringement investigation, IP due diligence, enforcement of IP rights at trade fairs, draft & review of contracts, technical secrets, license & management of IP rights, etc.
Mr. Mu has abundant experience in handling complex IP affairs related to materials, equipment manufacturing, medical instrument & equipment, textile, automotive, and other technologies. Mr. Mu has represented many well-known multinational and domestic corporations such as Nippon steel, Michelin, Dopont, Rimowa, Aetna Technology etc. and listed as the individual list of the World's Leading Patent Professionals 2022.
The Infringement Case of Patent entitled ‘Interlocking Intramedullary Nail’is recorded in the White Paper on The Judicial Protection of Intellectual Property Rights in Chinese Courts in 2021 issued by China Supreme Court. The case for Nippon steel vs. State Intellectual Property Office, Li Jianxin regarding patent invalidation dispute is selected as one of classic 50 IP cases in China in 2013. The case for Rimowa vs. Jiashan Keyue regarding patent infringement dispute is selected as one of top 10 cases by Zhejiang courts in 2019.
