Chance

At any time after a Chinese Patent has been granted, any person may file a request for invalidation to the Patent Re-examination Board (PRB).

Summary of Procedure

1) The petitioner submits a Request for Invalidation.

2) The PRB checks whether the Request for Invalidation complies with the formal requirements.

3) The petitioner for invalidation is allowed to submit further grounds and evidence within 1 month from the date of submission of Request.

4) Once the Request has been accepted, the PRB forwards the Request for Invalidation to the Patentee and sets a time limit for submitting responses and/or amendments.

5) A panel consisting of 3 examiners is then designated for the invalidation case.

6) The PRB may send further notifications and set time limits for submission of further comments and observations by both parties.

7) There will be an oral hearing proceeding.

8) Both parties can file final written statement after the oral hearing.

9) Decision of the PRB will be issued.

It typically takes the PRB one year to reach a decision.

Amendments to the Patent

Opportunities for amendment during Invalidation proceedings are extremely limited. Although the law provides that the claims can be amended as long as their scope is not broadened, the established practice of the PRB is to allow only three types of amendment: combination of existing granted claims, deletion of a granted claim, or deletion of an alternative in a granted claim.

Oral Proceedings

Oral Proceedings are called in most cases.

Appeal

An appeal to the 1st Intermediate Beijing IP Court can be lodged within 3 months from receiving the Decision of Invalidation issued by the PRB.

Withdrawal of Request for Invalidation

If the petitioner withdraws its request for invalidation then the proceedings are ended. Where, based on the examination work it has done, the PRB finds that it is able to make a decision of invalidation or invalidation in part of the patent right, the examination procedure shall not be terminated.