Alexandra Yang of Fangda Partners examines the differences and similarities between IPRs in the U.S. and invalidation proceedings before the CNIPA to give U.S. practitioners and clients a clear picture of the patent invalidation proceedings in China.

1. © 2019 Fangda Partners. All rights reserved.
Five Major Differences between IPR and
Invalidation Proceeding before CNIPA
March, 2020
Alexandra Yang, Fangda Partners

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1. Invalidation Grounds
IPR before the PTAB Invalidation Proceeding before the CNIPA
Substantive
Issues
• The claim lacks novelty
under 35 U.S.C. § 102.
• The claim is obvious
under 35 U.S.C. § 103.
• The claim lacks novelty. [Patent Law, Article 22.2]
• The claim has no inventiveness. [Patent Law, Article 22.3]
• The claim has no practical applicability. [Patent Law, Article 22.4]
Formality
Issues
N/A
• The claim’s scope is not clear. [Patent Law, Article 26.4]
• The claim cannot be supported by the specification. [Patent Law,
Article 26.4]
• The specification is not fully disclosed. [Patent Law, Article 26.3]
• The independent claim lacks the necessary technical feature.
[Detailed Rules for the Implementation of the Patent Law, Article
20.2]
• The amendment is beyond the scope of the original specification.
[Patent Law, Article 33]
• Double Patenting [Patent Law, Article 9]

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2. Institution Standard
IPR before the PTAB Invalidation Proceeding before the CNIPA
Petitioner
The petitioner cannot have previously filed a civil action in a
U.S. court challenging the validity of the same patent.
Any person can file a petition to challenge the
validity of a Chinese patent before the CNIPA.
Institution
Standard
The Director determines that the information presented in the
petition and any response shows a reasonable likelihood that
the petitioner would prevail on at least one of the claims.
Only formality requirements.
Serial
Petitions
The PTAB discourages serial petitions challenging the same
patent.
A petitioner can file multiple rounds of
invalidation petition to challenge the same
patent, but cannot use same arguments.
Time to
File
• For pre-AIA patents, any time after the grant or reissuance
of a patent.
• For post-AIA patents, any time after the later of either: (1)
nine months after the grant or reissuance of a patent; or (2)
the termination date of any post-grant reviews on a patent.
• Within one year of being served with a complaint in civil
actions alleging infringement of the patent.
Any time after the grant of a patent.

4. 4
3. Evidence and Discovery
IPR before the PTAB Invalidation Proceeding before the CNIPA
Form of
Prior Arts
Patent and printed publications
There are three types of prior art:
publication disclosure (including patent and printed publications),
use disclosure (referring to that the identical invention or utility model
has been publicly used, for example, the identical invention products
have been sold to the public), and
other disclosure (e.g. the identical invention has been disclosed by
verbal communication at a symposium).
Discovery Limited discovery
No discovery. But parties can submit expert opinions for the CNIPA’s
consideration. The expert opinion will be cross-examined during the oral
hearing.

5. 5
4. Impact on Related Infringement Litigations
IPR before the PTAB Invalidation Proceeding before the CNIPA
Standard for
Courts to
Grant Stay
Pending
Administrative
Action
When considering a stay, district courts
typically analyze:
•Whether a stay will simplify the issues in
question and trial of the case;
•Whether a stay would unduly prejudice or
present a clear tactical disadvantage to
the non-moving party; and
•Whether discovery is complete and
whether a trial date has been set.
Most courts in China usually wait for the
outcome of the invalidation proceeding before
continuing with subsequent substantive trials,
especially when the challenged patent is a utility
model patent or design patent.

6. 6 5. Time Frame
 The PTAB must complete an IPR within 12 months (on rare occasions, 18 month) of institution.
 It usually takes 6-9 months for the CNIPA to issue an invalidation decision, although there is no
specific time limits for the CNIPA.