The CNIPA’s decisions I am talking about are re-examination decisions (against a rejection decision of a patent application), and invalidation decisions (against a request for invalidation of a granted patent. The appeals against these CNIPA’s decision can only be filed in Beijing, as the CNIPA is always the defendant in such appeals. At present, only the Beijing IP Court will accept such appeals. A further appeal against the Beijing IP Court’s decision used to be filed at the Beijing High Court. However, from 1 January 2019, all appeals against the Beijing IP Court’s decisions on patent and utility model cases will be handled by the IP Tribunal of the China Supreme People’s Court (the CSPC) directly.
Such appeals had low, if not very low, reversal rate statistically. According to data kindly provided by Darts-IP:
- The reversal rate of the invalidation decisions increased every year from 2014 to 2017, from about 10% to 15%; and
- The reversal rate of the re-examination decisions increased every year from 2014 to 2017, from about 7% to 10%.
Together with the change of handling all appeals on patent and utility model cases by the IP Tribunal of the CSPC directly, the CSPC also now has a set of stipulations to handle such appeals, bring the Chinese patent re-examination/invalidation system closer to the international norm. Some major points are as below:
- More open interpretation of sufficiency (than the CNIPA).
- More open view on generalization (than the CNIPA).
- Relevant technical field should refer to the lowest level in the international patent classification.
- What a patentee says during infringement proceedings would be considered at invalidation.
This article was written by our IP Expert Toby Mak and originally published in the CIPA Journal. To access the full article, please click here.