Where an invalidation petitioner solely asserted that a disputed patent lacked novelty and therefore also lacked inventiveness, without advancing any additional specific grounds for lack of inventiveness, and the patent administrative authority neither informed the patentee of other specific grounds for finding lack of inventiveness nor provided an opportunity for the patentee to present arguments thereon, yet proceeded to conclude that the patent possessed novelty but lacked inventiveness, the court shall uphold the patentee's claim that the invalidation procedure violated the hearing principle and constituted a violation of statutory procedures.
Company A owns the PCT invention patent "Liquid Crystal Alignment Layer". On January 18, 2018, Corporation B filed an invalidation request against this patent. The CNIPA issued an invalidation decision on September 25, 2018, declaring all patent claims invalid for lacking inventiveness. Dissatisfied with this outcome, Company A initiated administrative litigation with the court, seeking to overturn the invalidation decision and obtain an order for CNIPA to issue a new examination decision.
The first-instance court made a judgment to dismiss Company A's claims, prompting Company A’s appeal to the Supreme People's Court. In its November 28, 2023 final judgment, the Supreme People's Court revoked both the first-instance court's ruling and CNIPA's decision, and ordered CNIPA to re-examine the invalidation request and issue a new decision.
The court's binding judgment determined that in patent invalidation examination procedure, CNIPA must formally notify all parties of the precise legal grounds, evidentiary materials, and established facts forming the basis of its invalidation decision. In addition, CNIPA must provide opportunities for the parties to submit observations and present arguments concerning these substantive grounds, probative evidence, and specific factual determinations - particularly before rendering any decision adverse to a party's interests. In the present case, the invalidation petitioner consistently asserted - throughout both the initial Invalidation Request document and the subsequent written Observations - that Claim 1 of the subject patent did not meet the inventiveness requirement solely due to its alleged lack of novelty in view of Evidence 2. Yet, the petitioner did not present any specific grounds challenging the inventiveness of Claim 1 of the subject patent. This position was reiterated during the oral proceedings, where the petitioner persisted in asserting lack of inventiveness based solely on the alleged lack of novelty. During the course of the oral hearing, while CNIPA did ask both parties whether Evidence 2 demonstrated any distinguishing features relevant to the assessment of inventiveness, it did not conduct a substantive investigation on whether those skilled in the art can easily think of the technical solution in claim 1 on the basis of Evidence 2 in combination with common knowledge in the art. More significantly, CNIPA did not afford the patentee any opportunity to present arguments on this issue. In conclusion, the contested decision exceeded the patentee's reasonable anticipation within invalidation examination procedure and constituted a violation of the fundamental principle of hearing. It also constituted a violation of statutory procedure under Article 70(3) of the Administrative Procedure Law, and thereby should be revoked.
(2021) Zui Gao Fa Zhi Xing Zhong No. 888
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