Viewpoint... The (I) of the patent confirmation examination model-the administrative procedure of patent confirmation examination.

Published:

2022-09-28

China's current patent confirmation examination model adopts the administrative single-track model, which is presented in the form of patent invalidation system and patent confirmation litigation procedure. After the patent right is authorized, any unit or individual who believes that the authorization of the patent does not comply with the provisions of the Patent Law and the Detailed Rules for the Implementation of the Patent Law may submit a request to the Invalidation Review Department of the State Intellectual Property Office (hereinafter referred to as the Invalidation Review Department) to review the patent again. The Invalidation Review Department examines this request and makes a conclusion that the patent right is invalid, the patent right is valid or partially valid. If the patentee or the applicant for invalidation is not satisfied with the invalidation procedure of the invalidation department, he may bring an administrative lawsuit to the people's court within the statutory time limit. This procedural feature is generally referred to as the single-track review model. 1 Sole review authority and review process The single-track system of China's patent confirmation examination procedure has two major characteristics, one is that the reexamination invalidation department is the only authority for patent confirmation examination, and the other is that the patent invalidation procedure is the only procedure for patent confirmation. 1, the review invalidation department is the only statutory patent confirmation examination authority. The establishment of the Invalidation Review Department aims to use the expert resources within the Patent Office to quickly eliminate disputes and reduce litigation through administrative procedures. From the point of view of China's entire patent authorization system, the review invalidation department mainly exists as the patent examination and authorization of the patent office. According to the provisions of the Patent Law, the responsibility of the Invalidation Review Department is mainly to review the decision to reject the patent authorization before the patent is granted, and to examine the request for patent invalidation after the patent is granted. In other words, the reexamination invalidation department actually has two opportunities to examine the patent authorization behavior of the patent office, one for the possible wrong patent non-authorization, and the other for the possible wrong patent authorization. However, the reexamination invalidation department is not the administrative reconsideration organ of the Patent Office, and the patent reexamination procedure and the invalidation procedure are not administrative reconsideration procedures. According to the Administrative Reconsideration Regulations of the State Intellectual Property Office, the administrative reconsideration agency related to the authorization of patent applications is the State Intellectual Property Office, and the agency responsible for legal work handles administrative reconsideration matters specifically, and is not satisfied with the decision to reject the patent application. The decision on the request for reexamination and the decision on the request for invalidation are not matters that can be reconsidered. In China, a large part of the examination of patent applications is carried out by the Patent Examination Collaboration Center. In 2001, the Patent Office of the State Intellectual Property Office established the Patent Examination Cooperation Center of the State Intellectual Property Office in Beijing. In 2011, it was renamed the "Patent Examination Cooperation Center of the Patent Office of the State Intellectual Property Office", and in 2016 it established a branch in Fujian. center. In addition, since 2011, Jiangsu, Guangdong, Henan, Hubei, Tianjin, Sichuan and other places have also established patent examination cooperation centers. The Center undertakes most of the examination of patent applications, such as the preliminary examination of various patents, the substantive examination of invention patents, and the patent evaluation report of practical patents. At the same time, it also participates in the examination of patent reexamination cases. The Audit Association Center is an institution directly under the State Intellectual Property Office and is entrusted by the State Intellectual Property Office to undertake patent-related examination work. Because it is an entrusted administrative act, the effect of the action of the Audit Association Center is borne by the State Intellectual Property Office. An administrative act of entrustment refers to an administrative act made by an administrative subject on the basis of entrusting a part of its authority or all of a certain authority to other administrative organs, organizations or individuals. Some scholars have pointed out that the concept of entrusted administrative act is not strict in expression, and the accurate statement should be the entrusted implementation of administrative act. In other words, the center of the Patent Examination Association does not have the substantive right of patent examination, but is entrusted by the State intellectual property Office to carry out the examination work for patent authorization. 2. The patent invalidation procedure is the only legal procedure for patent confirmation. The patent invalidation procedure is the only statutory examination procedure for granted patents. China does not allow the court to determine the validity of patents in the trial of patent-related civil cases, and the invalidation department has only this procedure to examine authorized patents. The uniqueness of the procedure leads to the fact that this procedure must cover all matters related to the examination of the validity of the patent. The invalidation procedure includes a patent invalidation request for any patent in any field of technology on all grounds. The term "all reasons" here does not mean that any reason that does not meet the conditions for granting a patent can be used to file a request for invalidation, but rather that the statutory reasons for invalidation need to be examined in this unique way and through a unique procedure. However, from the statistical data, the distribution of these reasons in all invalidation and litigation is not the same, and the need for complex and complete review procedures is also questionable. In contrast, the U.S. patent law sets up different examination procedures in the part of the administrative agency's examination to re-examine the authorized patent, and each applies different grounds for invalidation. For example, in the case of a two-party review procedure (IPR procedure), U.S. patent law limits the grounds for filing to those based on novelty and inventive defects. At the same time, China's invalidation procedure includes the examination of the right to confirm patents in all technical fields, and adopts a unified procedure. 2 More lenient start-up conditions Since the patent invalidation procedure is the only statutory patent confirmation examination procedure in China's patent legal system, a relatively loose starting condition is adopted. Specifically, the scope of the subject of the request can be raised, there is no express limit on the time of the raising, the commencement of the procedure is only subject to formal review and there are no other restrictions. 1. The scope of the subject of the initiation of the invalidation procedure. From the perspective of the subject who can file a patent invalidation request, the Patent Law and the Implementation Rules do not impose express restrictions. Any unit or individual who believes that the grant of the patent right does not comply with the relevant provisions of this law may request the reexamination Invalidation Department to declare the patent right invalid. However, the Review Guide lists a number of inadmissibility of invalidation, respectively, for the claimant does not have the qualification of the subject of civil litigation, the patent right is relatively invalid, the patentee's own patent is all invalid, multiple claimants jointly put forward a request for invalidation. It is worth noting that when the Review Guide was revised in 2010, the restriction on the qualification of the claimant for invalidation was added, that is, when the patent design conflicts with the legal rights obtained by others before the application date, the claimant must be able to prove that he is the prior right holder or interested party. Among them, "interested party" refers to the person who has the right to sue the court or request the administrative department to deal with the dispute of infringement of prior rights. The Supreme People's Court affirmed the validity of this restriction through a case, and in the case of "Stepels Design", the Supreme People's Court analyzed the nature of the object being regulated, the purpose of legislation and the effect of the legal order. In the judgment, the court held that the legislative purpose of the relative invalidity of the patent right is to safeguard the prior right and has nothing to do with the public interest. If anyone can claim the invalid reason for the conflict between the design patent right and the prior legal right of others, it may violate the will of the prior right holder. In addition to demonstrating the correctness of this provision itself, this approach of the Supreme People's Court also shows that while encouraging the public to challenge wrongly authorized patents in order to safeguard the public interest, more factors should be considered to set conditions for the initiation of invalidation proceedings, including the qualifications of the applicant for invalidation. The time requirement for initiating the invalidation procedure, from the time point of view, the patent law stipulates that the object of the invalidation request is the patent that has been announced and authorized, that is, the invalidation procedure is initiated as early as the date of the patent announcement authorization, and there are not too many restrictions. Although the direct effect of the patent invalidation procedure is to invalidate an authorized patent, this procedure can also be filed for a patent that has lapsed, such as the expiration of the patent or the voluntary waiver of the patentee. This is also made clear in the Review Guide. The reason why the request for invalidation should be allowed after the expiration of the patent is mainly because the various legal relationships arising from the patent during the duration of the patent may continue beyond the expiration of the patent. The unlimited time is also reflected in the fact that the examination procedure is not divided on the basis of different times, and any patent invalidation request filed at any time is heard using almost the same procedure. In fact, before the revision of the Patent Law in 2000, the administrative examination procedures for patent confirmation were divided into two types: patent revocation procedures and patent invalidation procedures. The division of procedures was bounded by six months from the date of patent authorization announcement. The two are quite different in terms of the subject of review and the reasons for invalidity/revocation. Similarly, in contrast, the U.S. patent law divides the patent re-examination procedure into post-patent authorization review (PGR) and two-party review (IPR) procedures, taking nine months after the patent is authorized. At the same time, it stipulates that if an infringement lawsuit based on the disputed patent is in progress, the party accused of infringement shall not initiate two-party review proceedings one year after the date of delivery of the copy of the complaint. 2. Formal review of the acceptance and initiation of the invalidation procedure As a result of the more lenient conditions for initiation, the Patent Reexamination Board only conducts a formal examination of the patent invalidation request before initiating the examination procedure. The contents of the formal examination stipulated in the Review Guide are whether the object of the request for invalidation is a patent authorized by the announcement, the qualification of the applicant for invalidation, and the scope, reasons and evidence of the request for invalidation. At this stage, the Patent Reexamination Board's examination of the reasons for the request and the evidence is limited to whether the requester has given the reasons for invalidation and stating what evidence is used to support what reasons. As long as the grounds and evidence of invalidity exist, are not hindered by the principle of non-justification and fall within the scope of article 66, paragraph 2, of the Regulations, the request is admissible. As for the examination of the reasons themselves and the probative force of the evidence, all are referred to the formal examination process. In contrast, in the United States patent law, after the patent grant review procedure is accepted, the patent director shall conduct a preliminary examination of the content of the request. Only when it is reasonably foreseeable that the request of the requester will make at least one claim be successfully declared invalid, the examination procedure will be formally initiated. 3 Reasons that can be used to request patent invalidation Although the purpose and process of the invalidation procedure is to re-evaluate whether the patent technology in dispute meets the conditions of patent authorization, not all the reasons that may cause the failure of authorization at the patent application stage can be the reasons for the patent invalidation request. The grounds for invalidation are limited to the grounds provided for in paragraph 2 of Article 65 of the Regulations. These reasons include: invention-creation or non-patentable object that is not protected by the patent law, failure to conduct confidential examination according to law when applying for a patent abroad, defects in the substantive conditions of patent authorization, defects in the writing of specifications or claims and defects in pictures, beyond the scope of application document modification, defects in the legality of invention-creation, lack of necessary technical characteristics of independent claims, and beyond the scope of division application. Among the above reasons, most of them are related to the scope of protection of patent rights. Through the re-examination of these reasons, the scope of protection of contested inventions and creations can be re-determined and redefined. However, there are also contents that have nothing to do with the scope of patent protection, such as failing to conduct a confidential examination in accordance with the law when examining a patent abroad, which will also invalidate the authorized patent right. It is worth mentioning that the right to apply and the wrong ownership of the patent do not belong to the reasons for the declaration of patent invalidation in China. The patent invalidation procedure does not involve a dispute over patent ownership, nor does the Department of Invalidation Review have jurisdiction over this matter. It is logical that errors in patent ownership should be made by transferring the patent to the correct right holder, rather than by invalidating the patent. The authorization error at this time is not that the patented technology does not meet the authorization conditions, so the patent should still be valid. But in contrast to the Japanese regulations. The Japanese Patent Law also considers patent "fraud" or patent joint application requirements as grounds for invalidation. The reason is that "since the patent law grants a patent right to an invention on the basis of an invention and through an application, there is no reason to retain the patent when the patent right is falsely recognized, that is, when the inventor does not apply for registration." Similarly, the issue of singleness defects is not a cause of invalidity, as the lack of singleness of a patent is generally resolved through division of applications at the application stage. However, after the patent is granted, the number of patent rights does not have much influence on the actual scope of protection of the invention, but only involves the issue of the annual fee of the patent.

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