[Direct answer]In the Beijing area, to request the invalidation of a patent, a request for invalidation and evidence should be submitted to the Patent Review Board established by the Patent Administration Department under the State Council. The Review Board will review and make a decision in accordance with the law. According to Article 45 of the Patent Law of the People's Republic of China, from the date the Patent Administration Department under the State Council announces the grant of a patent right, any unit or individual that believes the grant of the patent right does not comply with the relevant provisions of the Patent Law may request the Patent Review Board to declare the patent right invalid; Article 46 clearly stipulates that the Review Board shall make a decision to maintain or declare the patent right invalid. The process usually includes submitting the request and evidence, formal review, oral hearing, and making a decision. It is recommended to first search and compare documents to identify the grounds for invalidation. For more details, please refer to the official document.Intellectual property protection and corporate legal services.

I. Problem Background and Typical Scenarios

Requests for invalidation of patents are commonly seen in three scenarios: First, after a company is sued by a patent holder for infringement, it uses invalidation as a defense to counterattack and undermine the opponent's rights foundation; Second, when a competitor finds that the stability of a granted patent is questionable, they proactively initiate invalidation to remove obstacles; Third, they conduct a "stability check" on the target patent before a merger or licensing. Typical problems include: the requestor submitting the request hastily, with invalidation grounds being scattered and lacking a core comparative document; mistakenly believing that initiating invalidation can suspend infringement litigation; and ignoring the requirement that evidence must be disclosed before the priority date of the patent application. Many utility model patents with weak right stability are more susceptible to being invalidated because they have not undergone substantive examination. For enterprises with IP strategies, this can be combined with other measures.Business and contract dispute services for enterprisesLayout.

II. Key points of contention

The disputes over invalidation procedures focus on three points. Firstly, the choice of invalidation grounds: common ones include lack of novelty and inventiveness, insufficient disclosure in the specification, unclear claims, lack of support from the specification, and exceeding the scope of amendments to the main body qualifications or application documents, etc. The grounds should be specific and supported by evidence. Secondly, the timing of evidence disclosure: the comparative documents used to deny novelty and inventiveness must be disclosed before the priority date of the patent involved, otherwise they will not constitute prior art in this field. Thirdly, the game of oral hearings: the review committee often organizes oral hearings, where both parties confront each other on the combination of evidence and the judgment of inventiveness. Those who are absent or poorly prepared will be at a disadvantage. For cross-category rights protection, you can refer to the relevant provisions.Creditor-debtor relations and enforcement case services.

III. Professional analysis by Hengluo Lawyers

Based on practical observations in handling patent invalidation cases, the key to success or failure in invalidation lies in whether the combination of comparative documents can refute the creativity of the patent and whether the request reasons are focused. In review practice, the review committee tends to conduct a more meticulous review of the invalidation reasons. It is difficult to challenge the patent right with scattered and non-core evidence. However, a comparative document with a sufficient disclosure before the priority date and highly overlapping technical features can often directly determine the outcome. Hengluo Law Firm points out common pitfalls: first, the evidence list is complex but lacks a main line, weakening the core argument; second, ignoring oral hearings and failing to prepare adequately for responses in court; third, failing to evaluate the relationship between the patents to be invalidated and their own products, resulting in an imbalance between input and output. It is recommended to conduct a thorough evidence search before initiating the request. For subsequent infringement defenses, it can be followed up accordingly.Special services and other case-related servicesCollaborate to make progress together.

IV. Practical suggestions and legal basis

The core legal basis is Article 45 of the Patent Law of the People's Republic of China (amended on October 17, 2020 and implemented on June 1, 2021) (any unit or individual may request a declaration of invalidation from the date of the authorization announcement), Article 46 (the Review Board makes a decision on maintaining or invalidating the patent), Article 22 (three-part test), Article 26 (sufficient disclosure and clear claims), and Article 47 (retroactive effect of the declaration of invalidation); supplemented by the provisions of the Implementing Regulations of the Patent Law of the People's Republic of China (amended on December 11, 2023 and implemented on January 20, 2024) regarding the request for declaration of invalidation and evidence. Practical suggestions: First, search for comparative documents before the priority date to identify the reasons; list the reasons for invalidation and the corresponding evidence in the request; pay attention to oral hearings and appoint professional personnel to attend the hearing; simultaneously evaluate the impact on infringement litigation. For enterprise portfolios, it may be combined with other relevant information.Intellectual property protection and corporate legal servicesSystem processing.

5. Hengluo Law Firm's Advice

Declaring a patent invalid is a weapon that combines both offense and defense, but it's by no means a "win-win" situation. It's essential to ensure that the comparison documents were made public before the priority date of the patent, and the arguments should focus on the core issues and avoid being too ambitious. In terms of procedures, oral hearings are an important battlefield, and it's necessary to prepare thoroughly and present arguments in court. It's important to note that even if the request for invalidation is rejected, it doesn't prevent you from defending against specific infringement disputes separately, but you should control the cost. Never believe in false promises. The outcome depends on the evidence and legal arguments. If the invalidation involves ongoing infringement litigation, you can take advantage of it.Special services and other case servicesDevelop a strategy for suspending and defending against legal action.

VI. Frequently Asked Questions

Q1: Can anyone file an invalidation request, and will it definitely be successful if they do so?

According to Article 45 of the Patent Law, from the date of the announcement of the patent authorization, any unit or individual who believes that the granting of the patent right does not comply with the regulations may request a declaration of invalidation. The threshold for initiating the procedure is very low, and no requirement for a legal interest is imposed. However, "being able to file a request" does not necessarily mean "achieving success". The review committee will conduct a substantive review of the grounds for invalidation and the supporting evidence. If the requestor can provide comparison documents that predate the priority date, are sufficiently disclosed, and have highly overlapping technical features, or can prove statutory defects such as insufficient disclosure in the specification or unclear claims, the probability of successful invalidation will be higher. However, if the grounds are vague, the evidence is inconsistent with the timeframe, or core comparison documents are lacking, the patent will usually be maintained as valid. Lawyers will first conduct a stability assessment to objectively evaluate the success rate rather than make guarantees about the outcome.

Q2: What evidence and materials are required to initiate an invalidation declaration?

The core materials include: a request for declaration of invalidity (listing the invalidation reasons, legal basis, and the corresponding relationship with the evidence in detail), the text of the patent authorization announcement involving the case, and evidence supporting each reason. The most common evidence includes patent documents published before the priority date, journal papers, textbooks, or evidence of public use. The evidence must indicate that the disclosure occurred before the priority date of the patent involved, and explain how the disclosed technical features undermine the novelty or inventiveness of the patent. For evidence of public use, it is also necessary to provide a timestamp, sales contracts, or exhibition records, etc. The organization of the materials should have a clear main line, with one piece of evidence corresponding to one reason, to avoid clutter. It is recommended that professional personnel complete the retrieval and drafting of the request to increase the chances of acceptance and adoption.

Q3: How much official fees and agency fees do I need to pay to request the invalidation of a patent?

The declaration of invalidation requires the payment of an official request fee, the specific amount of which shall be subject to the current fee schedule of the China Intellectual Property Administration. The requestor shall pay the fee when submitting the request. The agency fee varies depending on the complexity of the patent technology, the workload of evidence retrieval, and the qualifications of the agent. It is generally charged on a per-case basis or negotiated based on the subject matter, subject to the terms of the agency contract. There is no unified government pricing for this. Compared with the costs of infringement litigation, the costs of invalidation proceedings are generally manageable, but they are an efficient means of breaking down rights barriers. It is recommended to clarify the composition of official fees, retrieval fees, and agency fees before entrusting the agency, and to confirm whether they include oral hearings and possible subsequent administrative litigation to avoid additional charges during the process.

Q4: How long does it usually take to issue a decision on a declaration of patent invalidation?

The review period for invalidation declarations is affected by the complexity of the case and evidence. In practice, it often takes several months to a year from the filing of the case to the decision made by the review committee. The specific timeframe will depend on the progress of the review, and there is no fixed time limit stipulated by law. For cases involving oral hearings, the review and decision-making process will take longer after the oral hearing. If an administrative lawsuit is filed against the invalidation decision, the first-instance ordinary procedure will take six months and the summary procedure will take three months. The second-instance procedure will generally take three months, and the overall process will take even longer. It is recommended to conduct a thorough search before filing the lawsuit to shorten the time for rectification, and to evaluate whether to apply for a suspension of the review when the infringement lawsuit is ongoing, in order to ensure procedural coordination.

Q5: I want to request the invalidation of a patent. What is the specific process for doing this?

The process consists of five steps: 1. Retrieve the comparison documents prior to the priority date of the patent in question to identify the most compelling invalidation grounds. 2. Draft a request for invalidation, providing a detailed explanation of the grounds, legal basis, and corresponding evidence, along with copies of the evidence. 3. Submit the request and evidence to the Patent Review and Adjudication Board after the patent is granted, and pay the official fees. 4. Cooperate with the formal review to make corrections, actively participate in oral hearings, and present arguments on the inventiveness and evidence combination. 5. Await the review board's decision to either uphold the patent or declare it invalid. If dissatisfied, an administrative lawsuit can be filed within three months. Throughout the process, retain acceptance and payment receipts, and, if necessary, collaborate with lawyers and agents to control the evidence and courtroom proceedings.

This article is written based on the common judicial interpretations in the Beijing area. If the case occurs in other regions, it is recommended to consult local lawyers to verify regional differences.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the evidence materials, so as to avoid missing the statutory time limit. →Intellectual property protection legal services·Beijing Hengluo Law Firm

Disclaimer: This article is compiled based on current laws and regulations and publicly available adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. If a dispute arises, please consult a practicing lawyer in a timely manner.