*AI-generated translation, for reference only.

Recently, the Intellectual Property Court of the Supreme People's Court concluded an administrative dispute case regarding the invalidation of an invention patent. The case clarified that in the review process of a patent invalidation declaration request, if determining whether a reference document can be used to evaluate the novelty and inventiveness of the patent in question requires taking into account whether the patent in question enjoys priority rights as a prerequisite, the patent administration department under the State Council may, on its own initiative, review the priority documents of the patent in question and verify them, but should give the parties the opportunity to cross-examine and state their opinions.

Sun [REDACTED] (hereinafter referred to as Sun) is the patentee of the invention patent named "Greening Brick with Slot Connection and Water Level Height Adjustment Function" (hereinafter referred to as the involved patent). Ningbo [REDACTED] Technology Company filed a request for invalidation of the patent. The evidence 1, 3, 12-14 submitted by it were after the priority date but before the application date of the involved patent. China National Intellectual Property Administration (hereinafter referred to as CNIPA), after obtaining the priority document of the involved patent on its own initiative and conducting a review, determined that the priority of the patent claims of the involved patent was not established. On this basis, it determined that the involved patent lacked inventiveness in light of the reference documents and made a review decision on the request for invalidation (hereinafter referred to as the challenged decision), declaring all the patent rights at issue invalid. Sun was dissatisfied and filed a lawsuit with the court of first instance.

The court of first instance held that CNIPA failed to organize both parties to cross-examine the priority documents of the patent in question during the administrative procedure, which constituted a violation of due process. Based on this, the court ruled to revoke the challenged decision and ordered CNIPA to reissue a review decision. The appellant, Sun, and Ningbo [REDACTED] Technology Company were dissatisfied with the first-instance judgment and filed an appeal. Sun's main argument on appeal was that CNIPA had no legal basis for reviewing the priority of the patent in question during the patent invalidation procedure.

The Supreme People's Court, in its second instance trial, held that: In the patent invalidation procedure, the patent administrative department of the State Council usually only examines the scope, reasons and evidence submitted by the parties for the invalidation declaration request. However, based on the principle of the legality of administrative acts and the need to determine the object of the patent invalidation declaration request review, it may, when necessary, review other obvious violations of the relevant provisions of the Patent Law and its implementing regulations by the patent, without being strictly limited by the scope of the request, the reasons and evidence submitted by the parties. Especially, if the patent claims domestic priority based on an earlier application that is deemed withdrawn and not published, and if the determination of whether the reference documents submitted by the invalidation requestor constitute prior art or conflicting applications for evaluating the novelty and inventiveness of the patent requires the premise of whether the patent enjoys priority, the patent administrative department of the State Council may, on its own initiative, introduce the priority documents to review and verify the domestic priority. In the invalidation procedure, the Ningbo [REDACTED] Technology Company not only asserted that the domestic priority of the patent in question was invalid, but also raised other invalidation reasons such as the patent lacking novelty and inventiveness. Whether the priority of the patent is valid directly affects whether evidence 1, 3, 12-14 in the reference documents constitute prior art or conflicting applications, which is a necessary prerequisite for evaluating whether the patent has novelty and inventiveness. Therefore, CNIPA's verification of the priority of the patent in the invalidation procedure does not violate the law.

Before an administrative authority makes an administrative decision unfavorable to a party, it should ensure that the party has the opportunity to state and defend itself regarding the facts, reasons and evidence on which the decision is based. Evidence that has not been verified through the legal investigation procedures such as being presented in court, identified and cross-examined cannot be used as the basis for a case. CNIPA may, on its own initiative, introduce priority documents to review whether the patent in question is entitled to the priority of an earlier application. However, as priority documents are key evidence for determining whether priority is established or not, the party's right to cross-examine the priority documents should be guaranteed, at least providing the party adversely affected by the challenged decision with the opportunity to cross-examine and state its opinions. Whether the domestic priority documents of the patent in question need to be kept confidential or not, the confidentiality requirements for evidence are not and should not be a reason for violating the principle of hearing and the due process of evidence determination, nor can it be a legitimate reason for refusing to submit evidence in administrative litigation. If the collegial panel of the challenged decision did not organize both parties to cross-examine the priority documents but instead obtained the evidence on its own and verified it by itself, and ultimately determined that the priority of the patent in question was not established, it would violate the principle of hearing and be a case where the administrative act violates the legal procedure, and should be revoked in accordance with the law.

Authors: Yu Haibo, Wang Jianxia