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Patent Invalidation Examination Will Introduce Hearings

In order to improve the transparency of patent invalidation examination and to simplify the subsequent appeal procedures (if any), the Intellectual Property Office ("IPO") drafted rules regarding the operational procedures for hearings on patent Invalidation cases in March 2018. The draft rules are based on rules governing hearings on patent validation cases in major countries as well as opinions from various groups, and are expected to be finalized in April.


Under the draft rules, the examiners in charge of a patent invalidation case, ex officio or upon request of a cancellation party, hold a hearing on the case. The purpose of the hearing is to allow both the cancellation petitioner and the patent holder to provide comments on the evidence submitted, present and refute arguments, and answer questions from each other. Thus, the hearing can enable the examiners to get clarifications from the cancellation parties and determine the facts based on logical reasoning.  Then, the examiners can decide the case based on those facts. An invalidation hearing should be heard by a panel of three examiners.


The IPO should give the cancellation parties a hearing notice 30 days prior to the hearing. Either cancellation party may apply to call a witness or witness to give evidence at the hearing. If the IPO considers that it is necessary to call the witness or expert, the IPO will notify the witness or expert prior to the hearing.


If either cancellation party submits new evidence or arguments during a hearing, the other party may respond to such evidence or arguments at the hearing or provide its response in writing after the hearing. During the hearing, the presiding examiner may ask the parties whether they are willing to negotiate a settlement, and if yes, the hearing may be suspended. During the hearing, the cancellation parties may ask the presiding examiner questions relating to the dispute or procedural issues and the presiding examiner should provide brief responses to those questions. However, the cancellation parties may not request the presiding examiner to comment on any substantive issue of the case.


According to Article 109 of the Administrative Procedure Act, if either cancellation party is dissatisfied with the examination decision made by the IPO based on a hearing, it may file a lawsuit without first exhausting internal appeal procedures.


It is expected that if this hearing mechanism is fully implemented, the oral arguments and clarifications from each party can help examiners determine the facts, such as the level of skill of persons having ordinary skill in the art; this would, in turn, improve the quality of decisions on patent invalidation cases.