One Case a Day | China: Possibly the Only Case Where Invalidity Requests Were Not Consolidated for Trial - Invalidation Decision No. 581062 (2024)

Case Introduction
This case involves the issue of whether multiple invalidity requests should be consolidated for trial. When two or more invalidity requests exist simultaneously, if the patentee makes amendments in response to one request, should those amendments serve as the basis for examining another request? Generally, amendments made by the patentee involve narrowing or abandoning certain protection scopes, which is beneficial to the public. Even for normal amendments made within the specified time limit, the substantive actions that the requester can take are not significantly different from those in consolidated trials. Therefore, for efficiency reasons, the China National Intellectual Property Administration (CNIPA) typically consolidates cases for trial.

This case may be the only successful instance where consolidation was refused.

Case Information
Invalidation Decision Number: No. 581062
Invalidity Requester's Agent: Chuangyuan Patent
Request Date: July 18, 2021
Decision Date: November 25, 2024

Key Points of the Case
1. The involved patent includes 29 claims.

2. On June 18, 2021, the CNIPA issued the first invalidation request examination decision (Decision 1), declaring partial invalidity of this patent (Claims 1-3).

3. In this invalidation request (Request 1), the requester primarily argued that Claims 4-5, 8-10, 14-16, 18, and 27 of this patent lacked novelty compared to Evidence 1. The patentee did not respond or amend the claims within the specified time limit.

4. Simultaneously, the patentee appealed Decision 1, and the decision was ultimately upheld.

5. The oral hearing for Request 1 was held on April 3, 2024. The requester submitted a receipt for the invalidation request oral hearing notice within the time limit, indicating inability to attend. During the oral hearing, the patentee proposed on-site amendments to the claims, adding a certain technical feature from Claim 21 (which was not challenged by the requester and does not exist in any claims challenged by the requester) to Claims 4, 6, 7, 8, and 27. The amendment method was consistent with the one submitted in another invalidation request case involving this patent (Request 2, where the amendment complied with the timing requirements for Request 2).

6. The collegial panel subsequently forwarded the patentee's amended claims to the requester and issued an examination opinion notice, requesting the requester to state opinions within the specified time limit regarding "considering the consistency of the examination basis between Request 1 and Request 2, using the amended claims in Request 2 as the examination basis for Request 1."

7. The requester submitted a statement of opinions within the time limit, indicating refusal to accept the amended claims in Request 2 as the examination basis for Request 1. The requester argued that the patentee's proposed amendments to the claims in Request 1 did not comply with the Patent Examination Guidelines regarding amendment timing. Additionally, the requester supplemented invalidity reasons and evidence for the amended claims.

Controversial Focus
Whether the amended claims in Request 2 could serve as the examination basis for Request 1.

Views of the Parties
On August 26, 2024, Request 1 underwent another oral hearing, with both parties participating.

The patentee argued: The submitted claim amendment replacement pages complied with the Patent Examination Guidelines regarding amendment timing. Additionally, Request 1 should be consolidated with Request 2 for trial, and the examination basis for both cases should be consistent—i.e., Request 1 should use the claim amendment replacement pages in Request 2 as the examination basis.

The requester argued: The patentee's amendments to the claims in Request 1 did not comply with the Patent Examination Guidelines regarding amendment timing, and the corresponding claim amendment replacement pages should not serve as the examination basis for Request 1.

In fact, as the requester's representative, the author explicitly stated during the oral hearing:

First, the patentee did not make amendments within the corresponding time limit for Request 1 and should be aware of and accept the legal consequences arising therefrom.

Second, based on the fact that the patentee did not make amendments, especially with the guidance of prior Decision 1, the requester may have made significant business decisions over more than two years. Accepting amendments at this point would cause substantial harm to the requester's legitimate rights and interests.

Third, the validity of the amendment basis in Request 2 should be examined first—i.e., whether the invalidity reasons in Request 1 are established—before examining the corresponding amendments and invalidity reasons in Request 2, thereby avoiding contradictory conclusions.

Fourth, the provisions in the Patent Examination Guidelines regarding consolidation of invalidity requests are based solely on efficiency considerations. However, when the interests of one party are clearly likely to be harmed, consolidation should be carefully considered. Without scrutiny of consolidation, patentees may exploit this loophole in the future to achieve unlawful purposes through overdue amendments, causing significant negative impacts on the patent system and the public.

The collegial panel informed both parties during the hearing: This oral hearing would investigate both the pre-amendment and post-amendment texts separately, with the specific examination basis to be determined by the collegial panel after deliberation.

Final Outcome
After the oral hearing, the requester of Request 2 withdrew the request. The decision stated:

Given that the requester of Request 2 withdrew the invalidity request, Request 2 has terminated examination. The patentee's amended claims in Request 2 can no longer serve as a valid examination text. Consequently, the patentee's argument that Request 1 should use the amended claims in Request 2 as the examination basis cannot be sustained. Additionally, the patentee's corresponding amended claims were not submitted within the response time limit for Request 1's invalidation request and do not comply with the Patent Examination Guidelines regarding amendment timing in invalidation procedures. The collegial group does not accept them, and these texts also cannot serve as the examination basis for Request 1.

Ultimately, the disputed claims were declared invalid due to lack of novelty.

None

One Case a Day | China: Determination of Implicit Limitations for Missing Essential Technical Features - Supreme People's Court Intellectual Property Final No. 779 (2025)

undefined