CHINA Law and Practice Contributed by: Hans She, Muran Sun, Yichen Zhou and Herman Zhang, Fangda Partners
a patent invalid or maintaining the validity of a patent, the party is entitled to bring a lawsuit to the People’s Court within three months of receipt of the decision notification. 4.2 Partial Revocation/Cancellation The claimant is entitled to request for invalidation against the whole granted patent or some claims of it. The CNIPA reviews the invalidation request on a claim-by-claim basis, and the validity of the claims not challenged will not be influenced. 4.3 Amendments in Revocation/ Cancellation Proceedings In the process of the invalidation examination, the patentee for an invention or a utility model is allowed to amend the claims, provided that the protection scope of the patent is not extended beyond the original scope. However, the paten- tee is not allowed to amend the specification or the drawings of the invention or utility model patent. The patentee for a design patent shall not amend the drawings, photographs, or brief explanation during the invalidation examination. 4.4 Revocation/Cancellation and Infringement Patent invalidation and infringement cases are not heard together. The invalidation request is examined and determined by the CNIPA. If a party is not satisfied with the result, the party could file an administrative lawsuit to Beijing Intellectual Property Court regarding the invali- dation decision. The CNIPA is the defendant, and the other party in the invalidation request is the third party. On the other hand, a patent infringement lawsuit is a civil dispute against the claimed infringing party, and such a case shall be filed to a certain Intellectual Property Court or Intermediate People’s Court in the correspond- ent province with jurisdiction.
The validity of the patent involved is usually cru- cial to a patent infringement dispute. During the defending period in a patent infringement case, if the defendant requests to declare the patent invalid, and the patent involved is (i) an inven- tion patent, or (ii) a utility model or design pat- ent of which the validity has been reviewed and maintained by the CNIPA, the People’s Court may not stay the litigation. If the patent involved is a utility model or design patent of which the validity has not been reviewed by the CNIPA, and the defendant requests to declare the patent invalid during the defending period, the People’s Court shall stay the litigation except when there is certain evidence reflecting the stability of the patent. If the defendant requests to declare the patent invalid after the defending period, the People’s Court shall not stay the litigation except when necessary. 5. Trial and Settlement 5.1 Special Procedural Provisions for Intellectual Property Rights Intellectual property proceedings adhere to the general procedural provisions of civil and admin- istrative lawsuits. Meanwhile, there are several special provisions on the trial of patent rights proceedings. A People’s Court shall complete the trial of a civil case under formal procedure within six months after the case is docketed. The term can be extended if necessary. In practice, while it usual- ly takes around one-and-a-half to three years to complete the first-instance adjudication, some complicated patent infringement lawsuits might take several years to complete the first-instance adjudication.
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