In China, the validity of an issued patent can be challenged by anyone at any time after the patent is granted, by filing an invalidation request with the Patent Re-examination Board (PRB). The PRB is one main constituent of the State Intellectual Property Office (SIPO).
The filing of such an invalidation request does not have any preconditions, such as the existence of a patent infringement lawsuit between the parties. The requester may challenge the validity of a patent on any invalidation grounds as stipulated in rule 65 of the Implementing Regulations of the Patent Law, which include for example, not only novelty (Article 22(2) of the Patent Law), inventiveness (Article 22(3)), but also claims not supported by the specification (Article 26(4)), being indefinite (Article 26(4)), insufficiency of disclosure (Article 26(3)), introduction of new matter through amendment (Article 33), and so on. The requester theoretically has unlimited chances to file such an invalidation request.
To invalidate an issued patent, the requester has to submit an invalidation request and has the burden of proving his case, with evidence. The patentee may submit his counter evidence in response to the invalidation assertions and evidence from the requester. All pieces of evidence are subject to cross-examination during the invalidation process. The parties will have chances to challenge the truthfulness, legitimacy and relevancy, as well as credibility of the evidence from the opposing party, and to make explanations on their own. The cross-examination of evidence is designed to help the PRB panel to decide its admissibility.
Types of evidence
1 Publicly available publications
Publicly available publications could be published books and periodicals, product catalogs, product specifications, national standards, internet information and so on.
Books and periodicals with ISBN, ISSN numbers, domestic official periodical serial numbers are well-recognised publicly available publications. Their truthfulness will generally be recognised.
For product catalogs, product specifications that do not have ISBN, ISSN and domestic official periodical serial numbers, the truthfulness and public availability may be in doubt, and may require the submitting party to provide further evidence to verify its truthfulness and public availability.
Materials and information that are available through internet or on-line databases may also qualify as publicly available publications. Materials and information from internet and on-line databases should be fixed by way of notarised downloading. The earliest time when the material or information became available to the public, if proven, shall be the time of publication of the internet or on-line databases. Internet websites that are better known and reputed carry higher credibility than other less reputed websites.
2 Evidences for common knowledge
College textbooks, technical dictionaries and encyclopedias, and technical handbooks are normally recognised as evidence for proving common knowledge. National standards are also normally regarded as belonging to common knowledge.
3 Testimony and declarations
In a patent invalidation procedure, the parties may submit witness or expert testimonies or declarations as evidence. The witness or expert who provides the testimony or declaration has to appear during the hearing for interrogation.
Normally, the parties to a patent invalidation case prefer to submit testimonies and declarations that are made by, for example, an inventor of the patent being contested or an employee of one of the parties. Testimonies and declarations of this nature are normally viewed as having low credibility as the witnesses and experts may be biased, and therefore the chance for the PRB to recognise the truthfulness of testimonies and declarations is relatively low, unless the facts or opinions presented by the witness or expert from one party meet no objection from the other party. The PRB panel will normally hold that such a testimony or declaration could not be taken as evidence without auxiliary evidence to verify its truthfulness. This is the case for example in PRB decision no 15149 and decision no 15869.
Personal judgments, presumptions and opinions that are made by an expert normally will not be taken as evidences.
Evidence on experiments, such as experimental reports, or experimental data, are normally preferred by either the requester or the patentee, or both parties. Credibility is an issue for experimental report and experimental data that are submitted as evidence.
The credibility of evidence of this type can be shown in the following sequence: evidence based on experiments done by a party itself is less credible than evidence based on experiments done by a third party upon the request of one party which is less credible than evidence based on experiments done by a third party entrusted by both parties to the invalidation case.
Evidence that carries low credibility has less chance of being accepted by PRB.
The admissibility of an experimental report or data as evidence is to a large degree dependent on the purpose of the submission. If the experiments are done to illustrate or prove what a prior art technology is up to, a report or data may generally be found admissible as evidence. If the experiments are done for example by the patentee to prove that the invention as claimed is fully supported by the disclosure in the specification or the specification meets the enablement requirement, such a report or data is highly unlikely to be admissible, because information of this nature is generally regarded as the responsibility of the patentee to fulfill as of the filing date of the patent application.
The admissibility of a piece of evidence based on experiments is also dependent on whether the substantive content of the evidence contains any unacceptable defect. If an evidence contains defects in its substantive content, for example in the case of a chemical formulation, where the total contents of components in the formulation exceed 100%, or in case the experiment was done to repeat a chemical reaction described in one document but the reaction conditions were in fact not repeated, then the evidence is highly unlikely to be accepted.
As an example, a PRB panel decided not to accept one piece of evidence based on experiments in decision no 15869. In that invalidation case, the requester repeated one process described in a prior art document. The panel did not accept the evidence for a number of reasons, including their finding of defects in the experimental report because the conditions in the prior art document were not repeated and the experimental data was also defective.
Material evidence such as samples and specimens can be used as evidences in PRB patent invalidation proceedings.
1 General requirements
As a general rule, the party who chooses to submit a piece of evidence is responsible for providing the original piece of evidence, or a verified copy of the original. For patent literatures, a copy will suffice.
2 Evidence in other languages
A party has the obligation to submit a Chinese translation of any pieces of evidence that are in a foreign language. In a patent invalidation proceeding, only translated sections of evidence that is in a foreign language will be admitted. Evidence will not be accepted if no Chinese translation is provided.
If a party disagrees with the accuracy of the Chinese translation of the evidence provided by the opposing party, this party has to provide his version of the Chinese translation within the time period designated by the PRB. If there is a consensus among the parties as to the accuracy of translation, then the agreed-upon Chinese text will be taken as the evidence. If the party does not agree on any part of the translation, then the PRB may engage a translation firm to provide a Chinese version.
3 Evidence formed outside China
Evidence that is formed outside China generally needs to be notarised by a public notary in that country or region and legalised by the Chinese consulate in that country or region, or to meet requirements as stipulated in an international or bilateral agreement to which China is a signatory party.
However, evidence formed outside China does not need to go through the notarisation and legalisation process if (i) the evidence can be produced inside China, for example, from libraries (for books) and from the SIPO database (for foreign language patent literatures); (ii) the truthfulness can be verified by other pieces of evidence; and (iii) the opposing party does not object to the truthfulness of the evidence.
In fact, for evidences from outside China, notarisation and legalisation may not always be helpful in establishing the truthfulness of the evidence. For example, for the notarisation of a witness testimony in many major industrialised countries, a public notary only verifies the personal identity of the person who appears in front of him, rather than the truthfulness of the text of the testimony. In such a case, the PRB normally will not recognise the truthfulness of the testimony, and will not take such a testimony as evidence without further auxiliary evidence to verify the facts. This is the case for example in PRB decision no 15149 and decision no 15869.
Use of evidence
A requester needs to specify in his invalidation request how the evidence is to be used in support of his invalidation assertions. For example, in a scenario where the requester submits a number of prior art documents in support of his invalidation assertion on lack of inventiveness, he has to specify which document is to be taken as the closest prior art and how these prior art documents are to be combined in order to reach the conclusions.
The requester should submit his evidence together with the invalidation request. The requester is also allowed to supplement his evidence within one month from the filing date of his invalidation request. Evidence from the requester will normally be refused by PRB if submitted outside this one-month time period. If the patentee chooses to consolidate issued dependent claims or to submit counter evidence, the requester will be allowed to provide supplementary evidences within the time limit that is designated by the PRB.
The patentee has to submit his counter evidence within the time limit designated by the PRB.
Both parties are allowed to submit evidence based on common knowledge, such as dictionaries, technical handbooks, college textbooks and so on, as well as to perfect the formality of evidence, such as bringing the original of a piece of evidence and to provide notarisation papers, up to the time of oral hearing.
As a general rule, the parties are not required to provide original, certified or notarised copies of evidence by the statutory or designated due date as discussed above. A copy of the original or a photo of the sample or specimen together with a brief description of the sample will suffice. The original documents, certified or notarised copies of documents, and original samples or specimens may be submitted as late as the date of the oral hearing.
After a decision on the validity of a patent is made, the PRB will refuse to accept any invalidation request that is filed with the same invalidation assertion based on the same piece of evidence.
The principle of res judicata does not apply if the invalidation assertion is changed in the new invalidation request, even if the same piece of evidence is used.
The principle of res judicata does not apply if the same piece of evidence was indeed submitted in the previous invalidation case but was not considered due to, for example, a formality defect.
Information disclosed in different places in the same document may be treated as two pieces of evidence. If the disclosures are in fact identical, then the principle of res judicata applies when the previous invalidation decision by the PRB is dependent on the disclosure in one place and the requester is using the disclosure in the other place as evidence in the new invalidation request. If the two disclosures differ from each other, then the principle of res judicata does not apply.
In summary, the selection and use of evidence is very important in patent invalidation proceedings in China. Proper understanding of the rules and practice on evidences will be helpful for both requesters and patentees to better prepare themselves for invalidation matters in China.
Bonan Lin is the managing partner and leads the IP practice at Zhongzi Law Office. He focuses on patent invalidation proceedings, patent infringement litigation, and counselling on the validity of patent and infringement issues, as well as the preparation and prosecution of patents in the field of polymer science, organic chemistry, crop science, pharmaceuticals, new materials and chemical engineering. His expertise further extends to the protection of trade secrets, invention management, as well as domain name dispute resolution.
Bonan Lin has a BS degree in polymer chemistry and engineering from Tsinghua University, and currently serves as vice president of the All China Patent Attorneys Association.
Xuezhen Zhang is a senior patent attorney at Zhongzi Law Office. Her practice covers patent prosecution, patent re-examination and appeal, patent invalidation proceedings, counselling on validity and infringement issues, as well as patent infringement litigation, in the field of polymer science, organic chemistry, crop science, pharmaceuticals, new materials and chemical engineering.
Xuezhen Zhang has M. S. degree in polymer chemistry and engineering from Dalian University of Technology. For 11 years, she engaged in scientific research, patent information and in-house counseling in a major petrochemical research institute in Beijing before joining Zhongzi Law Office in 2005.
She has been selected to lecture patent attorney training courses by SIPO.