*AI-generated translation, for reference only.

Keywords: Administrative; Invalidation of Utility Model Patent Right; Conditions for Filing a Lawsuit; Standing as Plaintiff; Patent Ownership Dispute; Interested Party; Suspension of Trial

Case Facts

[REDACTED] Technology Company is the registered patentee of a utility model patent with Patent No. 201920062017.8, entitled "Traveling Equipment." On March 10, 2021, Ye [REDACTED]qing, an outsider to the case, filed a request for invalidation against the patent right. In response, on September 8, 2021, the China National Intellectual Property Administration rendered Invalidation Request Examination Decision No. 51851, holding that the patent lacked novelty or an inventive step and declaring the patent right wholly invalid. [REDACTED] Power Company filed a lawsuit with the Beijing Intellectual Property Court, requesting revocation of the contested decision and an order directing the China National Intellectual Property Administration to render a new decision. Its main reasons were: (1) the patent is the subject of an ownership dispute and is highly likely to belong to [REDACTED] Power Company; [REDACTED] Technology Company has acknowledged the relevant findings of the contested decision, thereby relinquishing the patent right in a disguised form, which is highly likely to harm the lawful rights and interests of the true right holder, and therefore [REDACTED] Power Company should be recognized as an interested party to the contested decision; and (2) the contested decision's finding that the claims of the patent did not possess novelty or an inventive step has no basis in fact or in law and should be revoked.

On July 27, 2022, the Beijing Intellectual Property Court rendered Administrative Ruling (2021) Jing 73 Xing Chu No. 19401, dismissing the lawsuit of [REDACTED] Power Company. [REDACTED] Power Company appealed, and on December 5, 2023, the Supreme People's Court rendered Administrative Ruling (2022) SPC IP Admin. Final 836: (1) revoking Administrative Ruling (2021) Jing 73 Xing Chu No. 19401 of the Beijing Intellectual Property Court; and (2) directing the Beijing Intellectual Property Court to try this case.

Judge's Opinion

The court's effective adjudication held that: at the time [REDACTED] Power Company brought this lawsuit, the ownership dispute case concerning the patent right was still under trial, and whether [REDACTED] Power Company was an interested party to the accused administrative act depended on the outcome of the trial of that patent ownership dispute case; therefore, [REDACTED] Power Company was a potential interested party to the accused administrative act. Under such circumstances, the court of first instance erred in the application of law by directly ruling to dismiss its lawsuit on the ground that [REDACTED] Power Company lacked standing as a plaintiff. Moreover, once the lawsuit of [REDACTED] Power Company is dismissed by ruling, the administrative procedure for confirming the patent right may thereby come to an end and the contested decision will definitively take legal effect; even if the patent ownership dispute case ultimately determines that [REDACTED] Power Company is the right holder of the patent, it may then find it difficult to obtain adequate relief through other legal channels. Therefore, the court of first instance should continue the trial and may suspend the proceedings to await the outcome of the litigation in the patent ownership dispute case.

Judgment Digest

After the patent administrative authority declares the claims of a patent wholly or partially invalid, where a party asserting rights in a patent ownership dispute case files an administrative lawsuit for the confirmation of rights with respect to that patent, it may be found to constitute a potential interested party to the contested invalidation request examination decision, and it is inappropriate to simply rule to dismiss the lawsuit on the ground that the plaintiff lacks proper standing; where the patent ownership dispute has not yet been substantively resolved, the trial of the administrative lawsuit for the confirmation of patent rights may, as appropriate, be suspended.

Related Index

Article 61, Paragraph 2 of the Administrative Litigation Law of the People's Republic of China

First Instance: Administrative Ruling (2021) Jing 73 Xing Chu No. 19401 of the Beijing Intellectual Property Court (July 27, 2022)

Second Instance: Administrative Ruling (2022) SPC IP Admin. Final 836 of the Supreme People's Court (December 5, 2023)

The text of this case was adjusted on April 10, 2024.