*AI-generated translation, for reference only.

[Keywords]

Keywords: administrative; invalidation of a utility model patent; patent agency and patent attorney; self-representation; Article 18 of the Regulations on Patent Agency; referral of leads

[Case Facts]

 [REDACTED] Technology Company is the patentee of the utility model with Patent No. 201620383079.5, entitled "Camera for a Parking-Lot Control System and Parking-Lot Control System." On October 16, 2020, Zhang [REDACTED] requested the China National Intellectual Property Administration (CNIPA) to declare all claims of the patent invalid. In response, the Patent Reexamination Board issued, on May 11, 2021, Invalidation Request Examination Decision No. 49746, declaring the patent right entirely invalid. Dissatisfied, [REDACTED] Technology Company brought an administrative action before the Beijing Intellectual Property Court, requesting revocation of the contested decision and an order directing CNIPA to make a new decision. Zhang [REDACTED]'s agent ad litem was her son Fan [REDACTED], who had worked at CNIPA's Patent Reexamination Board from 2007 to 2012, engaging full-time in the examination of patent reexamination and invalidation cases, was transferred to CNIPA's Examination Business Management Department in 2012, and subsequently left.

On July 28, 2022, the Beijing Intellectual Property Court rendered Administrative Judgment (2021) Jing 73 Xing Chu No. 12976: dismissing [REDACTED] Technology Company's claims. Dissatisfied, [REDACTED] Technology Company appealed to the Supreme People's Court. On August 31, 2023, the Supreme People's Court rendered Administrative Judgment (2022) SPC IP Admin. Final 716: dismissing the appeal and upholding the original judgment. At the same time, the leads concerning the suspected unlawful conduct were referred to the relevant administrative authority for handling.

[Judge's Opinion]

The legally effective judgment of the court holds: Article 18 of the Regulations on Patent Agency provides: "No patent agency or patent attorney shall, in its own name, file a patent application or request the invalidation of a patent right." Article 26 provides: "Where a patent attorney commits any of the following acts, the department in charge of patent work of the people's government of a province, autonomous region, or municipality directly under the Central Government shall order correction within a time limit and give a warning, and may impose a fine of not more than 50,000 yuan; where the circumstances are serious or the correction is not made within the time limit, the patent administration department under the State Council shall order the suspension of undertaking new patent agency business for six to twelve months, up to revocation of the patent attorney qualification certificate: ... (5) ... filing a patent application or requesting the invalidation of a patent right in its own name." According to the facts ascertained, Zhang [REDACTED] and Fan [REDACTED] are mother and son; from December 2015 to February 2021, CNIPA accepted at least 25 invalidation requests in which Zhang [REDACTED] was the requesting party, and in each the agency of the requesting party was Heng[REDACTED] Company, where Fan [REDACTED] worked, with Fan [REDACTED] acting as agent in some of the cases. These 25 invalidation requests involved many types of devices—such as toys, antennas, electric vehicles, household appliances, and massagers—across multiple fields including mechanics and electricity, and there is no evidence that Zhang [REDACTED] possessed such extensive multi-field professional knowledge and capability, or that she had any interest in the outcome of the invalidations. Although anyone may, in accordance with the law, request the invalidation of a patent right, and this is not conditioned upon having an interest, when examining and judging whether the act of requesting invalidation violates the provisions of Article 18 of the Regulations on Patent Agency, reasonable grounds such as whether an interest exists may serve as an important consideration. Based on the existing evidence, and given that Zhang [REDACTED] is unable to provide a reasonable explanation, it may be preliminarily determined that the above invalidation requests were filed by Fan [REDACTED] and the patent agency where he worked, Heng[REDACTED] Company, in the name of Fan [REDACTED]'s mother Zhang [REDACTED] in order to circumvent the provisions of Article 18 of the Regulations on Patent Agency, and that such conduct is suspected of substantively violating the provisions of Article 18 of the Regulations on Patent Agency. Conduct that substantively violates the provisions of Article 18 of the Regulations on Patent Agency uses a lawful form to conceal its purpose of circumventing the law, disrupts the order of patent agency, and may carry the possibility of abusing the patent invalidation procedure to seek improper benefits, which is inconsistent with the legislative purpose of the patent invalidation procedure in serving the public's error-correcting function, and should be regulated in accordance with the law. However, Article 18 of the Regulations on Patent Agency is an administrative provision regulating patent agency conduct; as can be seen from Article 26 of the Regulations, a violation of Article 18 entails administrative legal liability such as correction within a time limit, a warning, a fine, and even revocation of the patent attorney qualification certificate, and does not necessarily cause the act of filing the invalidation request and the agency conduct to lose effect retroactively. Therefore, although there is conduct in this case suspected of substantively violating the provisions of Article 18 of the Regulations on Patent Agency, the invalidation request examination procedure does not thereby constitute a procedural violation. The relevant conduct may be investigated and dealt with by the patent administration department under the State Council in accordance with the law, and the leads concerning the unlawful conduct involved are hereby referred concurrently. Given that [REDACTED] Technology Company's grounds of appeal concerning the agent's qualification, the agent's failure to recuse when recusal was required, and inventive step cannot be sustained, its appeal requests are not supported.

[Judgment Digest]

Where a patent agency or patent attorney requests the invalidation of a patent right by borrowing another person's name, this constitutes a substantive violation of the provision in Article 18 of the Regulations on Patent Agency prohibiting requesting the invalidation of a patent right in one's own name, and the people's court may, in accordance with the law, refer the leads concerning the suspected unlawful conduct to the relevant authority for handling.

[Related Index]

Article 18 and Article 26 of the Regulations on Patent Agency

First Instance: Beijing Intellectual Property Court, Administrative Judgment (2021) Jing 73 Xing Chu No. 12976 (July 28, 2022)

Second Instance: Supreme People's Court, (2022) SPC IP Admin. Final 716 (August 31, 2023)