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Case of Beijing Higher People's Court Regarding Principle of Examination upon Request in China Patent Invalidation Proceeding
According to Section 4.1, Chapter 3, Part IV of the Patent Examination Guidelines, the Patent Reexamination Board shall follow the principle of examination upon request in a patent invalidation proceeding. That is, the Board shall conduct examination on the validity of the claims based on the reasons and evidence provided by the invalidation petitioner only. Sections 4.1 (1)-(7), Chapter 3, Part IV of the Guidelines provide exceptions to the principle.
Ningbo Comfort Fitness Equipment Co. Ltd., as the patentee of Chinese utility model No. 20112024250.4, filed an administrative suit against the invalidation decision No. 20159 issued by the Board. In the invalidation action concerned, the invalidation petitioner requested invalidation of Claims 1, 2 and 4-6 of the ‘250 patent for lacking novelty, Claims 3, 4 and 7 for lacking inventiveness, and Claim 5 for being unsupported by the specification. In 2013, Beijing No. 1 Intermediate People's Court (the precursor to the Beijing IP court) held that the Board's determinations on the inventiveness of Claims 2, 5 and 6 violate the principle of examination upon request, vacated the decision and remanded the case to the Board for a new decision. The Board appealed the case to Beijing Higher People's Court, which dismissed the appeal in 2014.
Based on Section 4.1 (4), Chapter 3, Part IV of the Guidelines, in an invalidation action where a petitioner requests invalidation of some but not all claims of a patent based on a reason, if the validity of a related claim not subject to said request based on the same reason is not determined and this will render the invalidation decision unreasonable, the Board can conduct an ex offcio examination on said related claim. In the above case, although the petitioner did not request negation of the inventiveness of Claim 1, since Claims 3, 4 and 7, which depend from Claim 1, are subject to the request for negation of inventiveness, the Board can conduct an ex offcio examination on Claim 1 for determining its inventiveness. Otherwise, the Board will reach an unreasonable conclusion: Claim 1 remains inventive but Claims 3, 4 and 7 depending from Claim 1 are announced as lacking inventiveness. However, the Board's examination on Claims 2, 5 and 6 does not meet the exception of principle of examination upon request and thus is illegal.