Third Revision of the “Implementing Regulations of the Patent Law of the People's Republic of China" – Reexamination and Invalidation

In order to ensure the effective implementation of the newly revised Patent Law, further improve China's patent protection system, and align with relevant international rules, the State Council issued the "Decision on Amending the Implementing Regulations of the Patent Law of the People's Republic of China" on December 11, 2023. The revised "Implementing Regulations" has come into effect as from January 20, 2024. This revision involves significant changes and adjustments to the system, overall representing an important response to the needs of innovation entities and an optimization of the patent legal system.
The "Implementing Regulations of the Patent Law of the People's Republic of China" was promulgated by Decree No. 306 of the State Council of the People's Republic of China on June 15, 2001. It underwent its first revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on December 28, 2002, and its second revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on January 9, 2010. The current third revision is in accordance with the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on December 11, 2023.
To assist you in better understanding the significant changes in the revised "Implementing Regulations of the Patent Law" and to better serve your needs regarding patent prosecution and protection, we have summarized and explained the relevant contents and procedures. We hereby introduce the new regulations concerning reexamination and invalidation, in conjunction with the related content from the newly revised "Guidelines for Patent Examination."

Revisions related to Reexamination
1. Newly Added Reason for Examination
The revised "Implementing Regulations of the Patent Law" added Rule 11: The application for a patent shall follow the principle of good faith. Patent applications of all kinds shall be filed on the basis of genuine invention and creation activities and the applicants shall not practice fraud.
In reexamination procedure, if the application is found to involve in practicing fraud, the panel could examine the relevant grounds and evidence.
2. Formality Change in Reexamination Documents
The requirement that “two sets of the amended documents shall be filed” is deleted. In practice, one set of the amended documents shall be filed.
3. Binding Force of Reexamination Decision
Before this third revision, where a reexamination decision revokes the decision made by the previous examination department, the Patent Reexamination and Invalidation Department shall remit the relevant dossier to the “previous examination department”, which shall continue the process of examination; while after the revision, where a reexamination decision revokes the decision made by the previous examination department, the Patent Reexamination and Invalidation Department shall remit the relevant dossier to “examination department”, which shall continue the process of examination.
This revision provides flexible handling for remitting the relevant dossier, i.e. the dossier can be remitted to the “previous examination department” or another appropriate “examination department”.
The examination department shall follow the reexamination decision, and shall not make a decision contrary to the reexamination decision on the same basis of facts, grounds and evidence.
4. Termination of Reexamination Procedure
The termination situation of “where no legal proceedings are instituted within the 3 month limit or the reexamination decision is upheld by an effective judgement of the People’s Court” is deleted.
5. Oral Hearing
① ways for oral hearing: offline oral hearing, online oral hearing (newly added), combination of online and offline oral hearing (newly added).
② acknowledgment by the parties: an acknowledgment of receipt shall be filed within the time limit designated in the notification of oral hearing and, in the acknowledgment, whether to attend the oral hearing procedure shall be indicated. Failure to submit the acknowledgment of receipt within the designated time limit is deemed not intending to attend the oral hearing proceedings.
③ time limit for filing the acknowledgment: revised from “within 7 days from the receipt of the notification” to “ designed time limit”. Generally, the designated time limit does not exceed 7 days.

Revisions related to Invalidation
1. Patentee’s Abandonment of Patent
Following the principle of disposal by the party concerned, where the patentee’s abandonment of patent does not harm other’s legal right or interest or the public interest, such abandonment will be confirmed by the examination decision on invalidation request.  
2. Exception to Non-acceptance of the Invalidation Request
An Invalidation Request against a patent which has been declared invalid by an examination decision shall not be accepted, unless said examination decision (invalidation decision) has been revoked by an effective judgement of the People’ court.
3. Newly Added Reason for Invalidation
The revised "Implementing Regulations of the Patent Law" added Rule 11: The application for a patent shall follow the principle of good faith. Patent applications of all kinds shall be filed on the basis of genuine invention and creation activities and the applicants shall not practice fraud.
The invalidation petitioner can file an Invalidation Request with this reason. Meanwhile, if the obtainment of patent obviously breaches the principle of good faith, the Panel could examine the patent by citing the invalidation reason stipulated in Rule 11.
4. Agent for Invalidation
“Where a party appoints a citizen as his agent” has been revised to “Where a party appoints his close relatives or its staff or other citizens recommended by relevant social organization”. The scope of power of the agent is still limited to making observations and receiving documents in oral hearing proceeding.
When a close relative is appointed as an agent, a certificate proving the relationship between the party concerned and the agent shall be filed, such as residence booklet, marriage certificate, birth certificate, certificate of adoption, certificate given by public security organs, certificate given by residential (village) committee, effective judgment or personnel archive.
Close relatives include spouses, parents, children, siblings, grandparents, grandchildren and other relatives with caregiving and support relationships.
When an employee is appointed as an agent, a certificate sufficiently proving the legitimate personnel relations between the party and the employee shall be filed, such as employment contract, records of social insurance premiums payment, records of wage payment; if the party is a government department or public institution, a written certificate indicating the employee’s position and the length of employment issued by the department or institution shall be filed.
When a citizen recommended by relevant social organization is appointed as agent, the relevant provisions for the civil procedure in the People’s court shall be referred to.
5. Formality Requirement for Participation of the Parties to the Patent Ownership Dispute in the Invalidation Procedure
In the Examination Guidelines, a new rule is added: “where a party filed a request for suspension but the invalidation procedure is not suspended, the party to patent ownership dispute can request to participate the invalidation procedure”
Documents required: where a party to patent ownership dispute requests to participate in the invalidation procedure, they should file a request for participating invalidation procedure and file certifying materials proving the ownership dispute has been accepted by the People’s court or local intellectual property administrative authority.
Official examination: after the formality examination, the Reexamination and Invalidation Department should issue a notification to the party to patent ownership dispute regarding whether or not to approve their participation in the invalidation procedure. Additionally, the Reexamination and Invalidation Department should issue a notification on the status of the invalidation case to the party to patent ownership dispute who has been approved to participate in the invalidation procedure.
Right: in the invalidation procedure, the party to patent ownership dispute can file its opinion for the Panel’s reference when examining the invalidation case.
6. Examination Scope of the Invalidation
In the invalidation procedure, the panel usually performs examination only on the invalidation scope, grounds and evidence requested/submitted by the parties concerned; and when necessary, the panel could examine the situation where the patent obviously violates the provisions of the patent law and its implementing regulations; the panel bears no obligation of a comprehensive examination on the validity of the patent.
7. Evidence Filed by the Petitioner
One acceptable situation of filing supplementary evidence out of 1 month period after filing the invalidation request, i.e. concerning claims amended by way of combination by the patentee, was deleted.
8. Amendment to Patent Documents in the Invalidation Procedure
For invention patents and utility mode patents, the amendments are still limited to claims; but a restriction is set, i.e. the amendments shall be made to address the invalidation grounds or the deficiencies pointed out by the panel.
Manner of Amendments: deleting a claim, deleting a technical scheme, further defining a claim and correcting obvious errors.
Deleting a claim means removing one or more claims, such as an independent claim or a dependent claim from the claims.
Deleting a technical scheme means removing one or more technical schemes from several parallel technical solutions defined in the same claim.
Further defining a claim means adding a technical feature included in other granted claims into the amended claim to narrow the protection scope.
9. Delivery of Decision
For an invalidation request involving patent ownership dispute, after a decision is made, the panel shall issue such decision to the parties to the patent ownership dispute who were approved to participate the invalidation procedure.
10. Announcement of Decision
Where the patent administration department under the State Council makes a decision on maintaining the validity of the patent or declaring the patent partially invalid on the basis of amended claims, it shall announce the amended claims.
11. Termination of the Invalidation Procedure
The termination situation of “where no legal proceedings are instituted within the 3 month limit or the examination decision is upheld by an effective judgement of the People’s Court” is deleted.
12. Special Requirements for the Invalidation Requests involving the Mechanism for Early Resolution of Drug Patent Disputes
① Definition: Cases in which the applicant for drug marketing authorization (also known as applicant for genetic drug) files an invalidation request against a patent that has been registered on the Patent Information Registration Platform for Drugs Marketed in China and is relevant to the genetic drug.
② Request and material:
Where, after making a Category IV Declaration according to Implementation Measures for the Mechanism for Early Resolution of Drug Patent Disputes (for Trial Implementation), i.e. “Category IV Declaration: the patent relevant to the genetic drug and registered on the Patent Information Registration Platform for Drugs Marketed in China shall be declared invalid or the genetic drug does not fall into the protection scope of the relevant patent”, the applicant for genetic drug files Invalidation Request, they shall indicate the Category IV Declaration in the Invalidation Request and file relevant proving material such as the official receipt of genetic drug registration, a copy of the Category IV Declaration.
Where, after filing the Invalidation Request, the applicant for genetic drug makes a Category IV Declaration according to Implementation Measures for the Mechanism for Early Resolution of Drug Patent Disputes (for Trial Implementation), they shall file evidence showing that the Invalidation Request involves mechanism for early resolution of drug patent disputes in a timely manner; for cases in oral hearing procedure, the evidence shall be filed no later than the close of the oral hearing; and for cases without an oral hearing, the evidence shall be filed no later than the issuance of an examination decision.
Where the patentee files a relevant lawsuit or askes for relevant administration adjudication according to the relevant provisions of Implementation Measures for the Mechanism for Early Resolution of Drug Patent Disputes (for Trial Implementation), they shall notify the panel of the relevant lawsuit or administration adjudication.
* Where the petitioner fails to file evidence showing that the Invalidation Request involves mechanism for early resolution of drug patent disputes, the Invalidation Request will be handled in normal procedure.
③ Examination Order: Where several Invalidation Requests involving the mechanism for early resolution of drug patent disputes are filed against one patent, such Invalidation Requests will be examined in order of the filing date.
④ Examination Basis: Where an early examination decision upholds the validity of the patent based on the amended text submitted by the patentee, a subsequent invalidation request can be examined based on the aforementioned amended text.
⑤ Notifying relevant departments: Upon request, a Notification on the Examination Status of Invalidation Request can be issued; where the relevant departments were previously notified before the examination of the invalidation request, the panel should, after making an examination decision, send the Examination Decision and Notice on Closure of Examination on the Invalidation Request to the relevant departments.
13. Oral Hearing
① ways for oral hearing: offline oral hearing, online oral hearing (newly added), combination of online and offline oral hearing (newly added).
② situation for not holding an oral hearing: For the invalidation cases that has not undergone oral hearing, where the panel receives a written request for oral hearing from the party concerned, the panel shall decide to hold an oral hearing unless the panel thinks that there is indeed no need to hold an oral hearing.
③ ways to notify: Notification of Oral Hearing can be sent to the parties through the electronic patent filing system, or via mail, fax, email, telephone, text message, or other means.
④ acknowledgment by the parties: the acknowledgment of receipt shall be filed within the time limit designated in the notification of oral hearing and, in the acknowledgment, whether to attend the oral hearing procedure shall be indicated. Failure to submit the acknowledgment of receipt within the designated time limit is deemed not intending to attend the oral hearing proceedings (Where the petitioner fails to file an acknowledgment of receipt and does not attend the oral hearing, its Invalidation Request is deemed as withdrawn).
⑤ time limit for filing the acknowledgment: revised from “within 7 days from the receipt of the notification” to “ designed time limit”. Generally, the designated time limit does not exceed 7 days.
⑥ Chairing of oral hearings: oral hearings are usually presided over by the chairman of the panel. For simple cases where the facts are clear and the dispute points are well-defined, with the unanimous consent from the panel, the chief examiner can also attend and preside over the oral hearing on behalf of the panel.
14. Amendment to Invalidation Procedure of Design Patent
① criteria for judging identical designs:
For a partial design, products of the same class mean that the products have completely the same use and the relevant parts also have the same use.
② criteria for judging substantially identical designs:
For a partial design, when judging whether a product is of approximate classes, the use of the product and the use of the relevant part shall be comprehensively considered.
A new situation of “substantially identical designs” is added: the difference between the designs is a change in conventional location and/or proportion of a portion in the entire product, which portion is claimed in the partial design.
③ overall observation and comprehensive judgement
The comparison of designs shall be made through the approach of overall observation and comprehensive judgment. The approach of overall observation and comprehensive judgment means taking a normal consumer as the subject of judgement and observing the overall design of the patent concerned and the comparative design, to determine the similarities and differences between them, assess the overall visual effect of the similarities and differences and then make a comprehensive judgement.
④ identifying the patent concerned
For a partial design, the focus should be on the shape, pattern, and color of the claimed part. Additionally, the position and proportion of such part in the depicted product should be taken into consideration.
⑤ examination in accordance with Article 23.2
When making judgments, the comparison could be made between the patent concerned and a single existing design or between the patent concerned and a combination of features of two or more existing designs.
The features of a existing design that can be used for combination should be designs that could be physically or visually distinguished and have relatively independent visual effects. Arbitrary divisions of points, lines, or surfaces are not existing design features suitable for combination. However, in the case of a partial design, the corresponding parts in existing designs can be considered as existing design features that can be used for combination.
⑥ comparison with the existing design of a product of the same or approximate class
For a product design comprising graphical user interface (GUI), the GUI shall have a more significant impact on the overall visual effect if the remaining parts of the design is of ordinary design.
⑦ conditions for entitlement to priority right
Where a design patent application is filed claiming priority to a domestic invention or utility model application, the earlier application will not be deemed as withdrawn.

Revisions related to Foreign Evidence
1. CNIPA designating translation agency
Where both parties cannot reach an agreement on the appointment of a translation agency, the Patent Reexamination and Invalidation Department can designate a professional translation agency to carry out the translation; the translation fee will be shared equally (50%) by both parties; if a party refuses to appoint or pay for the translation fee, it will be deemed as acknowledging the correctness of the Chinese translation submitted by the other party.
2. Verification formalities for evidence formed abroad
Evidence formed abroad means evidence formed beyond the territory of the People's Republic of China. Such evidence should be notarized by a notary public in the country where it was obtained or fulfill the certification procedures stipulated in relevant treaties concluded between the People's Republic of China and that country. The requirement “and verified by the Chinese embassy or consulate in the country” is deleted.
One circumstance, in which the party may not go through the relevant verification formality in the invalidation procedure, is added: the evidence has already been confirmed by an effective judgment of a people's court, a decision of an administrative authority, or a ruling of an arbitration institution.

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