*AI-generated translation, for reference only.

[Keywords]

Administrative, Patent administrative cases, Invalidation of utility model patent, Confidentiality review, Publicly disclosed technical solution 

[Case Facts]

Zheng [Redacted] Dental Technology Company (Shanghai) (hereinafter referred to as Zheng Dental Company) and others are the patentees of the utility model patent with the patent number 20192248****.5 and the name "Dental Instrument for Adjusting the Relationship of Upper and Lower Jaw Positions and Tooth Orthodontic System" (hereinafter referred to as the patent). Liu [Redacted] xin(hereinafter referred to as Liu) filed an invalidation request against this Patent before China National Intellectual Property Administration (hereinafter referred to as CNIPA). The main reason was that before the patentee of this patent filed for a patent in Taiwan region based on this patent as the priority right, they didn’t to submit a request for prior confidentiality review as required by Paragraph 1, Article 20 of the Patent Law of the People's Republic of China (revised in 2008, the same below), and thus the patent should be held invalid.

On April 21, 2022, CNIPA made the 55479th Invalidation Request Review Decision (hereinafter referred to as the "defendant's decision"), holding that according to Article 4 of the Patent Law, regardless of whether the applicant has applied  for confidentiality review when applying for a patent to CNIPA, CNIPA will review whether the patent application requires confidentiality. The announcement of this patent indicates that CNIPA has determined that the technical solution claimed in this patent does not fall under the circumstances requiring confidentiality. Therefore, the patent is upheld as valid. Subsequently, Liu filed a lawsuit with Beijing Intellectual Property Court, requesting to revoke the defendant's decision and ordering CNIPA to make a new review decision.

On November 23, 2023, Beijing Intellectual Property Court issued (2022) Jing 73 XC 12868: The lawsuit request of Liu was rejected. Liu appealed. On December 24, 2024, the Supreme People's Court issued (2024) SPC IP Admin. 135: The appeal was rejected and the original judgment was upheld.

[Judgment Opinion]

The main point of dispute in this case is whether this patent is invalid because the patentee did not undergo a confidentiality review before applying for a patent for the same technical solution in Taiwan, China.

Article 4 of the Patent Law stipulates: "If the invention or creation for which a patent application is made involves national security or significant interests that require confidentiality, it shall be handled in accordance with the relevant national regulations." Article 7 of the Implementing Rules of the Patent Law of the People's Republic of China (Revised in 2010, hereinafter referred to as the "Patent Law Implementing Rules") states: "If a patent application involves national defense interests that require confidentiality, it shall be accepted and examined by the national defense patent office; if a patent application accepted by the State Intellectual Property Office involves national defense interests that require confidentiality, it shall be promptly transferred to the national defense patent office for examination. If the national defense patent office does not find any reasons for rejection after examination, the State Intellectual Property Office shall make a decision to grant a defense patent right." "If the State Intellectual Property Office considers that the invention or utility model patent application it has accepted involves national defense interests other than national security or significant interests that require confidentiality, it shall promptly make a decision to handle it as a confidential patent application and notify the applicant. The special procedures for the examination, re-examination, and invalidation of confidential patent rights shall be stipulated by China National Intellectual Property Administration" According to the above provisions, all patent applications filed with CNIPA, CNIPA will conduct a confidentiality review and determine whether confidentiality is required based on whether the patent application involves national security or significant interests. Therefore, the published patent applications or the announced patents have already been examined and determined by CNIPA as not requiring confidentiality.

Paragraph 1 and Paragraph 4, Article 20 of the Patent Law stipulates: "Any unit or individual who intends to apply for a patent abroad for an invention or utility model completed in China shall, prior to doing so, report to the State Council Patent Administration Department for a confidentiality review. The procedures, time limits, etc. of the confidentiality review shall be carried out in accordance with the regulations of the State Council." "For an invention or utility model that violates the first paragraph of this article and is applied for a patent abroad, if it is to be applied for a patent in China, no patent right shall be granted." Article 8 of the Implementing Rules of the Patent Law stipulates: "Any unit or individual who intends to apply for a patent abroad for an invention or utility model completed in China shall, in accordance with one of the following methods, request the State Council Patent Administration Department to conduct a confidentiality review: (1) If applying for a patent abroad directly or submitting a patent international application to a relevant foreign institution, one shall, prior to doing so, make a request to the State Council Patent Administration Department and provide a detailed description of the technical solution; (2) If planning to apply for a patent abroad after applying for a patent in the State Council Patent Administration Department or submitting a patent international application to a relevant foreign institution, one shall make a request to the State Council Patent Administration Department before submitting the patent application abroad or the patent international application to the relevant foreign institution." These provisions stipulate the obligation to report for confidentiality review prior to applying for a patent abroad for an invention or utility model completed in China. The legislative purpose is also to prevent the disclosure of inventions or utility models involving national security or significant interests, which may damage national interests, through patent applications. In practice, when submitting patent applications to Hong Kong, Macao, and Taiwan, this regulation is also followed. Although the above provisions do not contain exception clauses, given the analysis in the previous text, published patent applications or announced patents have been reviewed and determined by CNIPA not to involve national security or significant interests and do not require confidentiality. Moreover, once patent application documents or patent documents are published or announced, their technical solutions have become known to the public, and there is no need for confidentiality. Therefore, the provisions of Paragraph 1, Article 20 of the Patent Law and Paragraph 2, Article 8 of the Implementing Rules of the Patent Law do not apply to published patent applications or announced patents. In view of this, for patent applications or patents that have been published by CNIPA and those that have been announced to be applied for a patent abroad, there is no need to report for confidentiality review by CNIPA prior to doing so.

It can be seen that the technical solution protected by this patent has been confirmed by CNIPA to not require confidentiality treatment, and it has already been in a state of being known to the public. Under these circumstances, the patentee does not need to undergo a confidentiality review before submitting the patent application to Taiwan. Therefore, the Court dismissed Liu’s claim that the Patent should be declared invalid for failing to apply to CNIPA for confidentiality review before filing a patent in Taiwan with the identical technical solution.

[Judgment Digest]

After the publication of an application or the announcement of a patent, if the patent applicant or the patentee applies for a patent abroad based on the technical solution in the patent application, and the party filing the invalidation request claims the invalidation of the patent on the grounds that the patent application was not subject to confidentiality review, the people's court shall dismiss such a claim.

[Corresponding Index]

Article 4 and Paragraph 1 and Paragraph 4, Article 19 of the Patent Law of the People's Republic of China (The version applicable in this case is Article 4 and Paragraph 1 and Paragraph 4, Article 20 of the Patent Law of the People's Republic of China which amended in 2008)

Article 7 and Article 8 of the Implementing Rules of the Patent Law of the People's Republic of China (The version applicable in this case is Article 7 and Article 8 of Implementing Rules of the Patent Law of the People's Republic of China  which amended in 2010)

First Instance: Beijing Intellectual Property Court, (2022)Jing 73 XC 12868 (November 23, 2023)

Second Instance: (2024)SPC IP Admin. Final 135 (December 24, 2024)