*AI-generated translation, for reference only.

[Keywords]

Administrative, Patent administrative case, Administrative reconsideration, Divisional application, Formal requirements, Substantive requirements, Notice that the Divisional Application is Deemed not to have been Filed, Notice of deemed withdrawal, Rejection of divisional application

[Case Facts]

On March 7, 2020, Qin [REDACTED] Company (hereinafter referred to as Qin Company) submitted a utility model patent application to China National Intellectual Property Administration (hereinafter referred to as CNIPA) with the application number 20202232****.2 and the title "An LED Encapsulation Sheet and LED Chip for Display and Backlight". On October 11, 2020, Qin Company submitted a divisional application to CNIPA based on the aforementioned application.

On March 22, 2021, CNIPA issued a notice that the divisional application was deemed not to have been filed on the grounds that it did not comply with the provisions of Article 42 of the Implementing Rules of the Patent Law of the People's Republic of China (revised in 2010, hereinafter referred to as the Implementing Regulations of the Patent Law). Qin Company was dissatisfied with the notice that the divisional application was deemed not to have been filed and filed an application for administrative reconsideration with CNIPA. After review, CNIPA determined that the specific implementation methods of the original application and the divisional application were exactly the same, and the differences between the claims of the original application and the divisional application all belonged to common technical means in the field. Therefore, it made an administrative reconsideration decision to uphold the notice that the divisional application was deemed not to have been filed issued by CNIPA. Qin Company was dissatisfied and filed an administrative lawsuit with Beijing Intellectual Property Court, requesting: to revoke the administrative reconsideration decision made by CNIPA and to order CNIPA to make a new decision.

On December 28, 2022, Beijing Intellectual Property Court issued (2021) Jing 73 XC 14331, dismissing the lawsuit filed by Qin Company. After the judgment was pronounced, Qin Company was dissatisfied and filed an appeal. On June 27, 2024, Supreme People's Court issued (2023) SPC IP Admin. 382, revoking the first-instance judgment, the administrative reconsideration decision, and the notice that the divisional application was deemed not submitted, and ordered CNIPA to re-make a decision on the divisional application submitted by Qin Company.

[Judge's Opinion]

One of the key points of dispute in this case is whether the notice issued by CNIPA, which deems the divisional application made by Qin Company as not having been filed, should be lawfully revoked.

According to the provisions on the examination and handling of divisional applications in Chapter 1 of Part I and Chapter 6 of Part II of the Patent Examination Guideline (Order No. 78 of CNIPA, revised in 2023), in the examination of divisional applications, for those that do not comply with legal requirements, the National Intellectual Property Administration shall handle them differently based on two distinct situations: If a divisional application fails to meet the formal requirements such as the application date, application number, submission time, applicant and inventor, application documents, application period and fees, the National Intellectual Property Administration shall handle it by issuing a notice that the divisional application is deemed not filed or deemed withdrawn; if a divisional application does not meet the substantive requirements stipulated in Article 42 and Article 43 of the Implementing Rules of the Patent Law, CNIPA shall handle it by rejecting the divisional application. Before making a rejection decision, CNIPA shall, in accordance with the principle of hearing, notify the applicant of the facts, reasons and evidence on which the rejection is based, and provide the applicant with at least one opportunity to be heard and to amend the application.

In this case, CNIPA held that the subsidiary application of Qin's company did not meet the conditions stipulated in Article 42 of the Implementation Rules of the Patent Law. It believed that this subsidiary application did not comply with the legal provisions in terms of substantive requirements and should be handled by dismissing the subsidiary application. Moreover, CNIPA gave Qin Company at least one opportunity to present their opinions and/or to revise the application documents. However, CNIPA issued a notice to Qin Company stating that the subsidiary application was deemed not to have been submitted, which violated the aforementioned provisions of the Patent Examination Guideline. It also essentially deprived Qin Company of the procedural rights to present their opinions and to modify the claims. Therefore, it should be corrected in accordance with the law.

In conclusion, the final judgment legally revoked the notice of the divisional application as if it had not been submitted, and upheld the administrative reconsideration decision and the first-instance judgment that maintained that notice.

[Judgment Digest]

According to the relevant provisions of the Patent Examination Guideline (Order No. 78 of CNIPA, revised in 2023), for divisional applications whose substantive requirements do not comply with the law, they should be handled by dismissing the divisional application. Before making the rejection decision, the applicant should be given the opportunity to present their opinions and make amendments to the application documents. If the administrative authority handles it by treating the divisional application as a notice of non-submission or a notice of withdrawal, the people's court shall legally revoke such handling.

[Corresponding Index]

Paragraph 2, Article 26 and Article 79 of the Administrative Litigation Law of the People's Republic of China (Amended in 2017)

Article 48 of the Implementing Rules of the Patent Law of the People's Republic of China" (The version applicable in this case is Article 42 of the Implementing Rules of the Patent Law of the People's Republic of China that came into effect on 2010)

First Instance: Beijing Intellectual Property Court, (2021)Jing 73 XC 14331 (December 28, 2022)

(2023) SPC IP Admin. Final 382 (June 27, 2024)