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Eligibility to Petition for a PRC (China) Design Patent Invalidation Action Based on Conflict with Other Legitimate Prior Right



According to Paragraph 2, Rule 65 of the Implementing Regulations of the PRC (China) Patent Law, where a granted design patent is found defective, an invalidation action can be filed against such design patent based on the ground of conflict with prior right(s) such as trademark or copyright. The Patent Examination Guidelines provide that a request for such invalidation action can be filed only by the prior-right holder or an interested person.

 

However, in administrative judgement No. 30 (2014) issued by the Beijing Higher People's Court, the Court held that there are no such limitations for a design patent invalidation action based on a conflict with other's legitimate prior right in the Patent Law or in the Implementing Regulations, while the Patent Examination Guidelines are not binding on the courts. Accordingly the Court revoked the decision issued by the Patent Reexamination Board of the State Intellectual Property Office (SIPO), which dismissed the invalidation petitioner's request because the petitioner was not the prior copyright holder or an interested person. Despite this, two years later, the same Court issued a different ruling. In administrative judgement No. 2901 (2016) issued by the Beijing Higher People's Court, the Court sustained the decision of the Patent Reexamination Board of the SIPO to dismiss the invalidation petitioner's request because the petitioner assigned its copyright to a third party and was no longer a prior-right holder or an interested person.

 

Since the SIPO is amending the Patent Law, the SIPO should take this chance to avert dispute over this issue by specifying the limitations on eligibility to request a design patent invalidation action based on a conflict with another's legitimate prior right in the Patent Law.
 



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