IP Newsletter Issue 29 (2018-12-17)
 
Determination of the Date of the Examination Decision on Request for Invalidation of a Patent

   The phenomenon of Examination Decision on Request for Invalidation of a Patent setting an “Issuance Date” on the first page and also setting a “Decision Date” on the second page has existed for a long time in judicial and administrative practice, but two dates being set on one official decision document is indeed ambiguous to the administrative counterpart and other members of the public about the date on which the invalidation decision is made by the Patent Reexamination Board. When such ambiguity concerns the actual interests of the administrative counterpart, an explanation that is beneficial to the administrative counterpart should be made. Specifically, it can be reflected from the following case.

   [Brief Introduction of a Case]

   A building materials company A, the Patent Reexamination Board of the State Intellectual Property Office (referred to as the Patent Reexamination Board), and Liu filed a lawsuit for the administrative disputes of invalidation of a utility model against the Beijing Intellectual Property Court. The building materials company A believes that the Patent Reexamination Board made the decision No. 26380 for the request (referred to as the sued decision) before the expiration date of June 13, 2015, and did not consider the statement submitted by the building materials company A on June 12, 2015 in the decision violating the principle of hearing, and constituting a procedural violation.

   [Investigation and Settlement]

   After the trial, the Beijing Intellectual Property Court found that in the procedure of the examination for invalidation of a patent in this case, the deadline for the statement for the building materials company A set by the Patent Reexamination Board was June 13, 2015, and the building materials company A filed a statement on June 12, 2015; the “Decision Date” of the sued decision was June 10, 2015, and the “Issuance Date” was July 3, 2015. The Beijing Intellectual Property Court issued a judgment on August 29, 2016, and decided to revoke the sued decision and ordered the Patent Reexamination Board to make a new examination decision.

   [Legal Analysis]

   How to determine the decision date of the invalidation?

   In this case, the date of the sued decision is June 10, 2015, earlier than June 13, 2015, which is the deadline for the statement set by the Patent Reexamination Board for the building materials company A. Thus can be judged that the statement submitted by the building materials company A on June 12, 2015 was not considered by the Patent Reexamination Board, which violates the principle of hearing and constitutes a procedural violation. The Patent Reexamination Board was ordered to make a new examination decision. It can be seen that although the “Issuance Date” on the first page is later than the “Decision Date” on the second page about the date of the decision of this case, when the actual interests of the building materials company A is involved, the earlier “Decision Date” is determined to be date of the invalidation decision.