*AI-generated translation, for reference only.

Keywords

Administrative; patent-related administrative case; invalidation of invention patent right; amendment of claims; deletion-type amendment; restriction

Case Facts

A German [REDACTED] Patent Joint-Stock Co., Ltd. (hereinafter "[REDACTED] Patent Company") is the patentee of the invention patent titled "Liquid Crystal Display and Liquid Crystal Medium with Vertical Alignment" with Patent No. 20118004****.1 (hereinafter "the Patent at Issue"). On August 16, 2017, a Japanese [REDACTED] Kabushiki Kaisha (hereinafter "[REDACTED] Kabushiki Kaisha") filed a request for invalidation against the patent right at issue. On October 9, 2017, [REDACTED] Patent Company submitted written observations and, at the same time, full-text replacement pages of the claims. Subsequently, during the oral proceedings, the China National Intellectual Property Administration (CNIPA) informed both parties in court that the claims submitted by [REDACTED] Patent Company on October 9, 2017 did not comply with the relevant provisions of the Guidelines for Patent Examination concerning amendments at the invalidation stage. [REDACTED] Patent Company stated in court that it abandoned Claims 6, 7, and 24 of the claims submitted on October 9, 2017. In response, CNIPA informed the parties in court that it would not accept this, and that the invalidation request case would take the granted-and-announced text as the basis of examination; both parties agreed to conduct the oral proceedings on the basis of that text, but [REDACTED] Patent Company expressed its reservations. On March 5, 2018, CNIPA, taking the granted-and-announced text as the basis of examination, made Invalidation Request Examination Decision No. 34935 (hereinafter "the Contested Decision"), holding that the Patent at Issue lacked novelty and/or inventive step and declaring the entire patent right invalid. Dissatisfied, [REDACTED] Patent Company filed a lawsuit with the Beijing Intellectual Property Court, requesting revocation of the Contested Decision and an order that CNIPA make a new decision.

On July 21, 2021, the Beijing Intellectual Property Court made Administrative Judgment (2018) Jing 73 Xing Chu No. 7702: the litigation claims of [REDACTED] Patent Company are dismissed. After the judgment was pronounced, [REDACTED] Patent Company, dissatisfied, appealed. On December 25, 2024, the Supreme People's Court made Administrative Judgment (2022) SPC IP Admin. Final 870, revoking the first-instance judgment and the Contested Decision, and ordering CNIPA to make a new examination decision on the invalidation request filed by [REDACTED] Kabushiki Kaisha.

Judge's Opinion

The focus of dispute in this case is: whether it was correct for the Contested Decision to take the claims text of the granted-and-announced patent directly as the basis of examination, that is, whether [REDACTED] Patent Company's oral request—made during the oral proceedings of the patent invalidation examination, to delete, on the basis of the amended claims text it submitted on October 9, 2017, Claims 6, 7, and 24 that were not accepted by CNIPA in court—should have been permitted. This may be analyzed from such perspectives as the institutional considerations underlying restrictions on deletion-type amendments to claims and the understanding and application of the relevant procedural provisions.

 (1) Institutional Considerations Underlying Restrictions on Deletion-type Amendments to Claims

The primary significance of the claim-amendment system in patent right-confirmation proceedings lies in permitting amendment. By permitting amendment, it prevents inventions and creations that make a technical contribution from being denied protection merely because of improper drafting of the claims, thereby achieving the institutional objectives of protecting the lawful rights and interests of the patentee and substantively incentivizing innovation. Of course, the claim-amendment system in patent right-confirmation proceedings should also contain restrictive requirements as to the manner and timing of amendment, etc.; however, restrictions on amendment are not the primary consideration of the claim-amendment system, but are merely a means of balancing interests on the basis of permitting amendment, and the purpose of restriction is to avoid serious impairment of the public's reliance interest and excessive delay in the efficiency of administrative examination. For precisely this reason, restrictions on the amendment of claims must be truly necessary; beyond the restrictions expressly provided by laws and administrative regulations, particular caution is required before adding further restrictions—especially where there is originally no possibility of impairing the public's reliance interest or the efficiency of administrative examination, that is, where there are originally no gains and losses of interests that need to be balanced, in which case the restriction itself is unnecessary. Restrictions on the amendment of claims must also have limits; the extent of restriction should not exceed the reasonable needs of balancing interests, and the impairment of interests suffered by the patentee as a result of the restriction should not be disproportionate to the enhancement of the public's reliance interest and of administrative examination efficiency obtained through the restriction—especially where the restriction makes it substantially difficult for the patentee to amend the claims while the public-interest and administrative-efficiency gains brought about by the restriction are rather faint, in which case the restriction may exceed the necessary limit. Whether restricting the amendment of claims where there is no necessity, or restricting the amendment of claims beyond the necessary limit, both may cause the restriction, as a tool for balancing interests, to break through the aforesaid basic requirement that the lawful rights and interests of the patentee must not be unreasonably impaired.

As to the institutional considerations underlying restrictions on deletion-type amendments to claims in right-confirmation proceedings: among the claim-amendment methods that may be permitted in right-confirmation proceedings as expressly enumerated in the Guidelines for Patent Examination, deletion-type amendment is rather special. Deleting a claim or a technical solution means relinquishing the originally granted right and confirming that the technical solution falls into the public domain, and the public interest will thereby be enhanced; deleting a claim or a technical solution also often means a reduction in the number of objects to be examined in the right-confirmation proceedings, and administrative efficiency will thereby be improved. Therefore, generally speaking, deletion-type amendment of claims itself involves no gains and losses of interests that need to be specially balanced, and restricting it is likewise unnecessary. If deletion-type amendment is restricted, then, first, it impairs the patentee's actual procedural interest in amending the claims and the expectable substantive interest in maintaining the patent right through claim amendment; second, it impairs the certain potential enhancement of the public interest; and third, it does not help, or at least does not obviously help, to improve administrative efficiency. Therefore, as for deletion-type amendment of claims, in principle it should not be restricted; and if restriction is indeed necessary, it must also be done prudently, both repeatedly weighing whether the necessity of restriction is sufficient and finely measuring whether the degree of restriction is appropriate.

 (2) Understanding and Application of the Provisions on Procedural Restrictions on Deletion-type Amendments

1. Restrictions on the Manner of Raising a Deletion-type Amendment—Whether Only Amendment Observations Accompanied by Replacement Pages Have Legal Significance

In this case, CNIPA, relying on Article 52 and Article 61, Paragraph 2 of the Implementing Regulations of the Patent Law of the People's Republic of China (hereinafter the "Implementing Regulations of the Patent Law"), took the view that only amendment observations accompanied by replacement pages have legal significance, and that accepting an oral request to delete claims that were not accepted lacked a legal basis. This is analyzed as follows.

The above provisions of the Implementing Regulations of the Patent Law are directed at patent grant proceedings; however, whether in grant proceedings or right-confirmation proceedings, clarifying the basis of examination is a self-evident precondition for advancing the examination, and therefore the requirements concerning submission of replacement pages should likewise be followed in right-confirmation proceedings. It is worth noting, however, that the above provisions imply a distinction between amendment observations and replacement pages. Generally speaking, amendment observations are an explanation of the manner and content of the amendment, used to clarify where the differences lie between the replacement pages and the text being amended, the manner of amendment, and so on; whereas the replacement pages are the result confirming the content of the amendment, that is, the outcome of the amendment. The two are two sides of the same coin, with different emphases; therefore, the "written clarity" achieved through submitting replacement pages is not the only way to clarify the basis of examination, and the "conceptual clarity" based on a consistent understanding of the amendment observations can likewise promptly clarify the basis of examination and effectively advance the examination. Therefore, "replacement pages shall be submitted as required" does not mean that amendment observations not accompanied by replacement pages are necessarily devoid of legal significance, nor does it mean that the replacement pages must be submitted together with the amendment observations. In principle, as long as a clear expression of the intent to amend is made to CNIPA in the normal course of the proceedings—whether raised orally alone, or by submitting amendment observations in writing and separately submitting replacement pages, or by submitting amendment observations and replacement pages together—so long as that expression of intent is clear and specific and reaches CNIPA within the prescribed time limit, it can constitute an amendment of legal significance. Of course, where amendment observations are submitted alone, the patentee shall, in accordance with law, also promptly supplement the replacement pages, unless CNIPA has already clearly refused to accept the amendment observations.

A deletion-type amendment is made on the basis of an existing claims text that serves as the object of amendment; the patentee, the invalidation petitioner, and CNIPA's examination collegiate panel can generally form a clear and consistent understanding of the basis of examination quite easily, and therefore deletion-type amendment is generally the simplest manner of amendment, and the effective advancement of examination is usually not affected by the absence of replacement pages. In examination practice, it is not uncommon for amendment observations deleting claims to be submitted in writing in advance or raised orally during the oral proceedings, for the examination to be advanced on the basis of the claims as amended by such deletion, and at the same time for the patentee to be ordered to promptly supplement the replacement pages. Just as, in litigation proceedings, a party may, in light of the parties’ respective claims, defenses, and evidence at different stages, timely adjust its litigation strategy and even relinquish part of its substantive or procedural rights, so too, in patent invalidation examination proceedings, as the examination stages advance, the patentee may timely adjust and narrow the scope of protection it seeks in order to maintain the validity of the patent right as far as possible. This is both consistent with the laws of examination and conducive to fairly and reasonably protecting valuable inventions and creations. Where it does not substantially affect the advancement of the examination, and where examination practice has also taken as the basis of examination the text after the patentee orally declares in court during the oral proceedings the deletion of part of the claims, it is inappropriate to refuse to accept the deletion-type amendment solely on the ground that the replacement pages of the claims were not submitted in writing in advance or in court. In fact, if the "conceptual clarity" of the basis of examination can already be formed, mechanically requiring the prior submission of replacement pages before advancing the examination may instead cause procedural delay and protraction; and treating the matter directly as if no amendment had been raised merely because the replacement pages were not submitted, without giving an opportunity to supplement them, would be even less conducive to the fair and reasonable protection of the patentee.

2. On the Timing of Raising a Deletion-type Amendment

The Guidelines for Patent Examination are both guidance for the patentee and the invalidation petitioner participating in patent examination and a constraint on CNIPA's performance of its patent-examination duties. Part IV of the Guidelines for Patent Examination, "Examination of Reexamination and Invalidation Requests," Chapter 3, "Examination of Requests for Invalidation," Section 4.6.3, "Restrictions on the Manner of Amendment," provides: "Before the Patent Reexamination Board makes its examination decision, the patentee may delete a claim or a technical solution included in a claim. Only within the response periods for the following three circumstances may the patentee amend the claims by means other than deletion: (1) in response to the request for invalidation; (2) in response to grounds for invalidation added or evidence supplemented by the petitioner; (3) in response to grounds for invalidation or evidence not mentioned by the petitioner that are introduced by the Patent Reexamination Board." It can be seen that, unlike other manners of amendment, deletion-type amendment need neither be a so-called "responsive amendment" nor be subject to a definite response-period restriction. The patentee may, within a non-manifestly-unreasonable time before the examination decision is made, raise deletion-type amendment observations with respect to any claim or technical solution.

A deletion-type amendment raised during the oral proceedings does not violate the above timing requirement. This is also corroborated by the provision in Part IV of the Guidelines for Patent Examination, "Examination of Reexamination and Invalidation Requests," Chapter 4, "Provisions on Oral Proceedings in Reexamination and Invalidation Procedures," Section 5.3, "The Third Stage of Oral Proceedings," to the effect that "after the parties have finished expressing their debate opinions, the chief of the collegiate panel announces the conclusion of the debate, and the parties make their final statements of opinion; when making the final statements of opinion, … the patentee … may declare a narrowing of the scope of patent protection or relinquish part of the claims."

Overall, the procedural requirements for deletion-type amendment should be relatively lenient compared with other manners of amendment: it may be raised either by submitting amendment observations in writing or by an oral declaration during the oral proceedings; the complete claims text after a deletion-type amendment may be submitted as replacement pages together with the amendment observations, or the amendment observations may be submitted first and the replacement pages supplemented later, or the replacement pages may be submitted first and the amendment observations explained later as the circumstances require; and its timing may be as late as a non-manifestly-unreasonable time before the examination decision is made. At the same time, given that a deletion-type amendment does not give rise to the problem of "amendment beyond scope"—that is, a deletion-type amendment will neither cause the amended text to exceed the scope recorded in the original patent documents nor enlarge the scope of protection of the original patent claims—and given that there is originally no so-called "responsive amendment" restriction on a deletion-type amendment, such that its object of deletion is not limited to content related to the invalidation request and grounds, generally speaking, as long as a deletion-type amendment complies with the aforesaid procedural requirements, it may be accepted once it is raised.

Specific to patent right-confirmation examination proceedings, where CNIPA informs the patentee in court during the oral proceedings that, among the amended current claims text, part of the claims can be accepted and part cannot, whether the patentee is allowed to orally declare the deletion of the claims that are not accepted has an enormous impact on the patentee's interest, namely the maintenance of the validity of its patent right: if deletion is allowed, it can still retain the aforesaid acceptable amendments; if deletion is not allowed, then, constrained by the requirement on amendment time limits, it usually cannot retain the aforesaid amendments that could have been accepted, and can only revert to the previous acceptable text, or even the granted-and-announced text. Refusing to accept such an orally declared deletion may, in effect, cause all amendment opportunities to come to nothing, and may even cause a patent right that could have been partly maintained valid, or that could have been maintained valid after an appropriate deletion-type amendment, ultimately to be declared entirely invalid.

In summary, during the oral proceedings of patent invalidation examination, where CNIPA considers that part of the amended claims cannot be accepted, it shall give the patentee the right to choose the basis of examination: the patentee may choose either to take the previous acceptable claims text as the basis of examination, or to delete the not-accepted claims in the current claims text and take only the remaining claims as the basis of examination. If the patentee chooses to delete the not-accepted claims in the current claims text, then, regardless of whether the deletion is raised orally in court or in writing, and regardless of whether replacement pages are submitted together with it, CNIPA shall accept it; where replacement pages are not submitted in court, CNIPA may require the patentee to supplement them within a certain time limit; and if the replacement pages are not supplemented within the designated time limit, the patentee may be deemed not to have amended the claims in accordance with law, and the matter may be handled accordingly. Where the citation relationships between the retained claims and the deleted claims are complex—such that, if multi-level citation relationships arise, the oral proceedings cannot continue to be advanced without the submission of replacement pages—CNIPA may also require the patentee to prepare the replacement pages on the spot in court, or to temporarily adjourn the hearing for the patentee to prepare them, or it may allow the patentee to supplement them within a designated reasonable time limit and hold the oral proceedings at another time.

Judgment Digest

During the oral proceedings of patent invalidation examination, where CNIPA considers that part of the amended claims cannot be accepted, it shall allow the patentee to delete the not-accepted claims in the current claims text and take the remaining acceptable claims as the basis of examination. Regardless of whether the deletion concerned is raised orally in court or in writing by the patentee, CNIPA generally shall accept it; where replacement pages are not submitted in court, CNIPA may require the patentee to supplement them within a certain time limit; and if the replacement pages are not supplemented within the designated time limit, the patentee may be deemed not to have amended the claims in accordance with law, and the matter may be handled accordingly.

Related Index

Article 1 of the Patent Law of the People's Republic of China (the version applicable to this case is Article 1 of the Patent Law of the People's Republic of China as amended in 2008)

Article 58 of the Implementing Regulations of the Patent Law of the People's Republic of China (the version applicable to this case is Article 52 of the Implementing Regulations of the Patent Law of the People's Republic of China as revised in 2010)

First instance: Administrative Judgment (2018) Jing 73 Xing Chu No. 7702 of the Beijing Intellectual Property Court (July 21, 2021)

Second instance: Administrative Judgment (2022) SPC IP Admin. Final 870 of the Supreme People's Court (December 25, 2024)