Patent administrative lawsuits in China can be classified into three categories according to the administrative organs that undertake specific administrative acts: administrative lawsuit that has the Chinese State Intellectual Property Office (SIPO) as the defendant; administrative lawsuit that has the Patent Reexamination Board (PRB) as the defendant; and administrative lawsuit that has a local intellectual property administrative office as the defendant.
Those having the PRB as the defendant include lawsuits against reexamination decisions and lawsuits against decisions of invalidation made by the PRB. In practice, such lawsuits account for a large proportion of all patent administrative lawsuits. So, how to institute legal proceedings for a patent administrative lawsuit?
- Timing requirement of instituting legal proceedings
According to Articles 41 and 46 of the Patent Law of China, where the applicant for patent is not satisfied with the decision of the PRB, it or he may, within three months from the date of receipt of the notification, institute legal proceedings in the court; where the patentee or the person who made the request for invalidation is not satisfied with the decision of the PRB declaring the patent right invalid or upholding the patent right, such party may, within three months from receipt of the notification of the decision, institute legal proceedings in the court.
It should be noted that, the above “the date of receipt of the notification” refers to the actual date a recipient signed to acknowledge receiving the notification, not the date on which the notification is presumably received, which is the 16th day from the date of the issuance of the notification, as adopted during the examination stage. In practice, it is prudent to institute legal proceedings within three months from the date of the issuance of the reexamination decision or the decision of invalidation.
- Documents for instituting legal proceedings
In an administrative lawsuit against a reexamination decision, the petitioner for reexamination is the plaintiff and the PRB is the defendant; in an administrative lawsuit against a decision of invalidation, the patentee or the petitioner for invalidation is the plaintiff, the PRB is the defendant, accordingly the petitioner for invalidation or the patentee serves as a third party.
The filing stage of a patent administrative lawsuit includes two procedures, i.e., pre-registration and case-filing.
Pre-registration refers to the act of submitting complaint documents by a plaintiff to the Intellectual Property Rights (IPR) Court in Beijing. The documents that shall be submitted by the plaintiff to complete the pre-registration procedure include: a petition, the original copy of the administrative decision (e.g., a reexamination decision or a decision of invalidation), a copy of the patent/patent application document upon which the administrative decision is based, and a copy of the plaintiff’s certificate of identification. If the plaintiff is a natural person, said certificate of identification refers to an identity card or other valid identification certificates. If the plaintiff is a legal entity, said certificate of identification refers to a certificate of the legal entity, e.g., a copy of a valid business license, an annual inspection certificate, and the identification certificate of a legal representative. According to requirements of the IPR court of Beijing, said identification certificate of the representative of a legal entity shall be a documentary proof given by a third party, i.e., a document that explicitly specify said person as the legal representative of the entity, e.g., a resolution of the board of directors, a shareholders’ meeting documents, etc. A document signed by said person himself/herself or by an employee of the entity is not qualified as said identification certificate of a legal representative.
If the plaintiff is located in Hong Kong, Macao, Taiwan or a foreign country, the plaintiff shall also submit a copy of a power of attorney indicating the appointment of a Chinese lawyer or a Chinese patent attorney. The power of attorney shall be signed or sealed by the petitioner for reexamination or that for invalidation recorded in the administrative decision. If there are two or more plaintiffs (the petitioners for reexamination/ the petitioners for invalidation/ the patentee), the power of attorney shall be signed or sealed by all the plaintiffs. The pre-registration is the beginning procedure of a patent administrative lawsuit, and shall meet the above requirements of timing, i.e., shall be done within three months from the date of receiving the reexamination decision or a decision of invalidation.
The second procedure of the filing stage is case-filing. Documents that shall be submitted in this procedure include: the plaintiff’s original certificate of identification, and an original power of attorney if an attorney is appointed. If the plaintiff is located in Hong Kong, Macao, Taiwan or a foreign country, the plaintiff shall also supply a notarized document signed by a local notarization institution for the plaintiff’s certificate of identification, an legalized document issued by the Chinese Embassy in said foreign country, and a Chinese translation of said notarized documents and said legalized documents done by a translation institution designated by the IPR Court. Generally, those documents shall be submitted within two months from the date of finishing pre-registration. When a judge in the Case Filing Chamber of the IPR Court determines the documents submitted meet the requirements, a case-filing notification shall be issued.
The foregoing are the provisions and requirements of the filing stage of an administrative lawsuit. In case of transfer of rights or in case of vanishing of an entity that serves as the plaintiff, further certificate documents, e.g., certificate of entity vanishing, certificate of succession of patent rights, etc., notarized and legalized documents thereof, shall also be provided according to the specific situation.