—(2020) Supreme People’s Court Final Administrative Judgment No. 93

【The main takeaway of the trial】

In the examination procedure for multiple invalidation requests of the same patent right, if the patentee modifies a claim in one of the procedures and the modification is accepted by the CNIPA, for the administrative case of patent right confirmation examined by pre-modified claim and caused by the decision being sued later, it is unnecessary to continue the trial without basis for examination.

In the meantime, the relevant decision sued later should be revoked by the people's court, but there is no need to order the CNIPA to make a new decision.

【Case Introduction】

In the administrative dispute case over the invalidation of utility model patent rights with the appellant Guy A. Shaked Investments Ltd. (hereinafter referred to as Guy Company, the patentee) and the appellee CNIPA, and the third party in the original trial, Shenzhen Nasiwei Electronics Co., Ltd. (hereinafter referred to as Nasiwei Company, the invalidation requester), the utility model patent named "Hair Straightening Brush" with the application number 201390000237.9 (hereinafter referred to as the patent) was involved.

The CNIPA made the No. 30338 Invalidation Request Examination Decision (hereinafter referred to as the sued decision), declaring the patent invalid.

The Guy Company refused to accept the sued decision and filed a lawsuit with the Beijing Intellectual Property Court (hereinafter referred to as the court of first instance), requesting an order to revoke the decision of the sued decision and ordering the CNIPA to make a new decision.

The court of first instance held that the basis for the trial of the sued decision was the claims at the time of the announcement of the patent authorization, however, the Guy Company revised the abovementioned claims in the other invalidation procedure for the patent, and the modified claims have been approved by the CNIPA. Therefore, the trial of the sued decision didn’t involve substantive meaning, and the litigation request of the Guy Company was dismissed by the judgment.

The Guy Company refused to accept the decision and appealed to the Supreme People’s Court, claiming that in the case in which the two invalidation decisions concerning the patent has not taken effect, the other invalidation decision of the patent did not cause any change for examination basis of the sued decision in this case. Therefore, the sued decision of this case shall be made substantive trial.

On December 3, 2020, the Supreme People's Court revoked the first-instance judgment and the sued decision, and rejected other appeals of Guy Company.

【Typical meaning】

In the second instance of the Supreme People’s Court, the Supreme People’s Court held that in the examination procedures for multiple invalidation requests involving the same patent right, if the patentee has modified the claims in one of the procedures, and the amendment conforms the provisions of the Patent Law, it shall be regarded as the patentee's waiver for the original claims.

The disposal of the patentee's rights will inevitably have a substantial impact on other uncompleted administrative procedures for the examination of invalidation requests involving the same patent right and subsequent administrative litigation procedures.

In the invalidation request procedure involved in the invalidation decision of the other case, Guy Company, as the patentee, revised the claims including that deleting claims 1, 4 and 9, and merging 4 and 9 into a new claim 1, with the corresponding revision of serial numbers and citation relationships of the rest claims, which have been accepted by the CNIPA.

The above-mentioned amendments constitute a waiver of the claims before the amendments, and it will definitely have a substantial impact on the invalidation request procedure that is currently in progress, that is, examination procedure for the invalidation request involved in this case.

In this case, the examination procedure for the invalidation request in this case should no longer continue the examination and make a decision based on the claims at the time of the publication of the patent authorization, that is, the claims before the amendment.

The invalidation decision of the other case was made on October 18, 2016, declaring that the patent rights were all invalid, and based on the claims at the time of the authorization announcement, that is, before the amendment, the CNIPA made the sued decision of the case on 19th of the same month, declaring the patent all to be invalid.

When the sued decision of this case was made, there was no need to continue the examination due to the nonexistence of examination basis, so the sued decision that has been made should be revoked, and the CNIPA had no need to make a new decision.

The trial basis of the first-instance judgment regarding the sued decision has changed, and the trial for the sued decision is no longer substantively correct, in view of that it has not handled the sued decision of this case, the sued decision shall be corrected.

From The Intellectual Property Court of the Supreme People’s Court

September 7th, 2021