Chapter1, Part IV of the PRC Patent Examination Guidelines provide that the Patent Reexamination Board when conducting examination on a patent invalidation case should comply with, among others, the principle of examination upon request and the principle of hearing wherein the former refers to that an invalidation procedure should be initiated at the request of a party concerned while the later refers to that prior to an invalidation decision is made, the party that would be adversely affected by such decision shall be given an opportunity to express his/her opinion on the reasons, facts and evidence behind such decision.

In Beijing Higher People's Court Jing-Xing-Zhong Case No. 1082 (2017), the invalidation petitioner filed a request with the Board for invalidation against Claims 1-7 of PRC Patent No. 201010602968.3. The Board accepted the case on 2 April 2015 and sent copies of the invalidation brief and invalidation exhibits to the patentee. An oral hearing was held on 5 May 2015. The patentee amended the claims on 4 June 2015 by cancelling original Claim 1, rewriting dependent Claim 4 in an independent form so that it became independent Claim 1, merging original Claims 2 and 3 so that they become independent Claim 2, merging original Claims 2 and 6 so that they become independent Claim 5. The other claims were correspondingly amended. The Board sent a copy of the amended claims to the invalidation petitioner who however did not respond to such amendments and did not invalidate independent Claim 2 based on new reasons. In 7 September 2015, the patentee again amended the claims by cancelling dependent Claim 6 and a solution in Claim 7 that refers to independent Claim 1. The Board did not send a copy the further amended claims to the invalidation petitioner. Instead, the Board made the invalidation action based on its own determination on 25 September 2015 in which independent Claim 2 was invalidated. The patentee appealed the case to the Beijing IP court which sustained the invalidation decision.

The Higher Court found that during the invalidation action, the invalidation petitioner never provide invalidation reasons against independent Claim 2 and the Board made the decision on its own, which violates the principle of examination upon request. Furthermore, the Board did not give the patentee a chance to respond to its invalidation reason for independent Claim 2, which violates the principle of hearing. The Higher Court accordingly made the following decisions:

  1. The administrative judgement issued by the Beijing IP court is vacated;
  2. The invalidation decision issued by the Board is vacated; and
  3. The invalidation action is remanded to the Board for a new decision.