China Series: Administrative Patent Proceedings within the Chinese Government

            The State Intellectual Property Office (SIPO) is the patent office for China.  SIPO was founded in 1980 and is responsible "for patent work and comprehensively coordination of the foreign related affairs in the field of intellectual property."  More specifically, SIPO examines patent applications, grants patents, regulates the quality of patent examiners, implements regulations, and occasionally revises the Chinese Patent law. 

            While SIPO is the central office responsible for patents in China, there are a series of similar systems at various levels of local government.  These "local" Intellectual Property Offices are established in a number of provinces, autonomous regions, districts and municipalities across China.  The local offices are responsible for managing the administrative work regarding intellectual property, and may also have jurisdiction over patent infringement matters.

            1.  SIPO, the PRB, and Applicants; Prosecuting Patent Applications

            SIPO and the associated local Intellectual Property Offices initial role is to receive and examine applications for patents.  Similar to the United States Patent and Trademark Office, SIPO may first issue a rejection of the application, but provide the applicant with an opportunity to respond.  SIPO will review the response from the applicant, and if not satisfied, will then issue a final rejection.  An applicant may submit an appeal to the Patent Reexamination Board (PRB) within three months of receipt of the final rejection. 

            The PRB is an extension of SIPO and consists of a number of examiners experienced in both technical and legal matters.  The PRB will review an appeal and determine both patentability and validity.  The PRB may provisionally withdraw, non-provisionally withdraw, or sustain the final rejection.  The decision by the PRB essentially exhausts an applicant's administrative remedies.  However, judicial remedies may still be preserved. 

            2.  SIPO and Adverse Parties; Litigating Patent Disputes

            The administrative arm of the Chinese patent system also assists in the protection of patent rights.  While an aggrieved party may also seek judicial remedies, administrative proceedings are often preferred in order to conserve judicial resources.  To initiate a litigation proceeding on the administrative side, a complaint is filed at a local intellectual property office in an appropriate province.  The administrative agency will attempt to mediate the dispute before any additional legal proceeding, and may issue fines or seize property. 

            Notably, the administrative agency cannot award damages to a wronged party.  Administrative orders may be appealed to the Administrative or Civil Divisions of the Higher People's Courts, which generally supervise administrative agencies for patent litigation disputes.  While a litigant could bypass the administrative track altogether and directly file a complaint in court, most civil patent litigations proceed first through the administrative process due to the lower cost. 

            3.  SIPO, the PRB and Third Parties; Invalidation Proceedings  

            According to the China Patent Law, once SIPO grants a patent right, any individual who disagrees may request an invalidation proceeding before the PRB.  An invalidation proceeding may apply to all or only part of a patent right.   A person initiation an invalidation proceeding must submit a detailed request along with all necessary evidence for the proceeding.  The PRB has discretion to accept or deny a request for invalidation. 

            If an invalidation request is accepted the petitioner may submit additional evidence.  The patentee may also attempt to narrow the scope of protection by amending the claims.  Either the petitioner or the patentee may further request an oral hearing before the PRB.  The PRB will reexamine the application in light of the additional evidence, amendments and/or oral hearing and render a decision.  The PRB may declare the patent invalid as a whole or in part, or sustain the patent right based on the evidence.

            The next post in the China Series will cover Judicial Patent Proceedings within China.