The requester filed a request for invalidation of the patent right that has expired due to arrears of payment.  In the invalidation, the patentee submitted a reponse requesting that “the patent right be abandoned from the filing date”.  According to the provisions of the current Patent Law and its implementation rules and the "Patent Examination Guide", the patentee who voluntarily abandons his patent right can only be accepted and announced before the patent right is terminated. The Department of Preliminary Examination of the Bureau issued a declaration of abandonment of patent rights to the patentee as deemed not to have been filed, on the grounds that the patent right involved in the case was terminated due to arrears.  Although the patentee has filed a declaration of abandonment of patent right from the filing date, the statement has not been announced through effective legal procedures and the patentee’s claims cannot be realized.  In fact, there may still be disputes over a patent right that is valid between the application date and the termination date.  If the patentee "declaration of abandonment of patent right from the application date" cannot publicize the public through effective legal channels, it is still existed.  It is still possible that any party can file a request for invalidation of the patent right.

In the invalidation procedure, if the patentee proposes to abandon the patent right from the filing date, a decision shall be made to declare all the patent rights invalid according to the party’s disposal principle, which shall be legally justified.  If the patentee abandons part of the patent right by reducing its protection scope or giving up part of the claims, the part of the patent right deemed to be abandoned by the patentee does not comply with the provisions of the Patent Law and its implementing rules from the beginning, and the requester is relieved of the burden of proof for the claim to invalidate this part of the patent right.  The Reexamination and Invalidation Department can directly declare the part of the patent right invalid based on the party’s disposal principle, so as to in fact realize the law that the patentee "abandon part of the patent right from the filing date" as a result of.

Therefore, in response to the patentee's declaration of “abandoning the patent right from the filing date”, the decision of the Reexamination and Invalidation Department to declare all patent rights invalid is reasonable both in terms of jurisprudence and social effects.

From CNIPA