Chapter 7: Patent Reexamination and Invalidation Procedures

7.1 Reexamination Procedure

If an applicant disagrees with a rejection decision, they may file a request for reexamination with the Patent Reexamination Board within 3 months of receiving the rejection decision. The reexamination fee is CNY 1,000 for invention patents and CNY 300 for utility models and design patents.

7.1.1 Reexamination Process

The PRB conducts a reexamination consisting of a written review and, in some cases, an oral hearing. The PRB may either affirm the rejection, reverse the rejection and remand for further examination, or directly grant the patent. The average processing time for reexamination is 12-18 months.

7.2 Invalidation Procedure

Any entity or individual may request invalidation of a granted patent. The invalidation request fee is CNY 3,000 for invention patents and CNY 1,500 for utility models and design patents. Invalidation may be requested on grounds of lack of novelty, lack of inventiveness, insufficient disclosure, or other statutory grounds.

7.2.1 Invalidation Proceedings

Invalidation proceedings before the PRB are conducted as adversarial proceedings, with both the patentee and the requestor presenting arguments and evidence. The PRB may hold oral hearings, which are similar to court trials. The PRB's decision may be appealed to the Beijing Intellectual Property Court.

7.3 Statistics and Trends

In recent years, invalidation rates have varied by patent type. Invention patents generally have lower invalidation rates due to substantive examination, while utility models, which undergo only preliminary examination, face higher invalidation rates. The 2020 Amendment strengthened the requirements for utility models, which is expected to improve their overall quality.

Successfully obtaining a patent is only the beginning of the patent lifecycle. Maintaining patent rights requires diligent attention to the annual fee system, which we detail in the next chapter.

Chapter 8: Patent Maintenance and Annual Fee System

8.1 Annual Fee System Overview

Patentees must pay annual fees to maintain patent rights in China. Annual fees are due starting from the year of grant and continue for the duration of the patent term. Failure to pay annual fees results in the lapse of patent rights.

8.2 Invention Patent Annual Fees

8.3 Utility Model and Design Patent Annual Fees

8.4 Grace Period and Late Payment

A 6-month grace period is available for late payment of annual fees, subject to a surcharge. The surcharge is calculated as 5% of the annual fee for each month of delay. If the annual fee is not paid within the grace period, the patent rights are deemed to have lapsed from the expiration date of the annual fee payment period.

8.5 Fee Reduction Policy

CNIPA offers significant fee reductions for qualified applicants. An 85% reduction applies to individual applicants and small enterprises (annual taxable income under CNY 1 million). A 75% reduction applies when multiple applicants jointly file and all qualify as individuals or small enterprises. The fee reduction applies to application fees, examination fees, and annual fees.

8.6 Open License Annual Fee Reduction

Effective from the 2020 Amendment, patentees who declare an open license (making the patent available to any licensee at a reasonable royalty) are eligible for a 15% reduction in annual fees during the open license period. This policy aims to promote technology transfer and patent commercialization.

Maintaining a patent is a financial commitment that must be justified by the patent's commercial value. Equally important is understanding how to enforce patent rights against infringement, which is the subject of our next chapter.

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