In China, a patent invalidation procedure,1[1] initiated by a requester, is an administrative right confirmation procedure for improperly granting a patent right set up by the National Intellectual Property Administration (CNIPA). The procedure is before the Patent Reexamination Board (the PRB), whose decision is subject to judicial review. Res Judicata, a.k.a. claim preclusion, is a doctrine stipulated by Rule 66.2 of the Implementing Regulation of the Patent Law of China.
“Where, after a decision on any request for invalidation of the patent right is made, invalidation based on the same reasons and evidence is requested once again, the Patent Reexamination Board shall refuse to accept it.”
The doctrine bars a later invalidation request where a prior invalidation decision (1) involved the same patent claim, (2) reached a final judgment on the merits, and (3) involved the same ground and evidence. The rationale for the existence and utilization of the doctrine rests upon the administrative efficiency, judicial resource conservation, and certainty in final decisions.
In practice, one issue that naturally arises in the application of the doctrine is: What is the scope of “the same evidence” presented to the same ground challenging to the validity of the same patent claim?
THE GUIDELINE
To implement the Res Judicata doctrine, the Guideline for Examination (2010) (Section 2.1, Chapter 3, Part IV) provides: “After an examination decision on a request for invalidation of a patent has been made, any new request for invalidation of the same patent based on the same reasons and evidence shall not be accepted or examined. Where the reasons of request for the new request have not been considered in the examination decision of the previous request for invalidation due to the reason of time limit, etc., the new request shall not be regarded as inadmissible under the above-mentioned circumstance”.
Despite the guideline, there are some uncertainties regarding what is meant by "the same evidence".
WOULD EVIDENCE BE THE SAME
The cases discussed below provide a multi-dimensional reference on what constitutes the same evidence. It can be seen that, in judging the same evidence, a strict standard has been applied by the PRB and courts, which requires that the evidence be the same in substance, as well as in the way of presentation and argument.
1. The Same Evidence: Despite Difference in Formality
In the invalidation decision (No. WX854), the PRB determined that Evidence 1 submitted by the requester (the cover of "Factory Equipment of Manmade Fiber" published by Qingdao Ocean University Press and copies of pages 261-266, 282-284, etc.) for challenging the novelty and inventive step of claims 1-2 of the patent at issue disclosed exactly the same contents with Evidence 4 (a copy of the product manual of the R535A viscose filament spinning machine) cited in the previous decision made by the PRB on the same patent (No. 5502). In the previous decision, claims 1-2 of the patent in question have been evaluated the novelty and inventiveness thereof over Evidence 4. Therefore, the requester once again submitted a request for invalidation of the same patent with the same reason and evidence. According to the doctrine of Res Judicata, the request was refused to be heard.
Although the closest prior art of spinning machines in the invalidation cases appears in different Evidence 1 and Evidence 4, the spinning machines disclosed by the two are completely the same. The two evidence documents rendering the same spinning machine as the closest prior art to evaluate novelty and inventive step belong to the same evidence.
2. Different Evidence: One Patent Publication and One Priority Document
In the invalidation decision (No. WX9877), the PRB determined that the evidence provided by the requester was a priority document of the evidence cited in the previous decision. The claims, description and drawings of the evidence and the priority document are not identical and do not belong to the same evidence, and thus does not apply the doctrine of Res Judicata. The appellate court issued a similar judgement.2 [2]
3. Different Evidence: Same Foreign Documentwith Different Chinese Translation
In the invalidation decision (No. W606752), the PRB concluded that the Chinese translation of Annex 3' was different from the Chinese translation of the evidence in the previous decision (W606398). Annex 3' the requester resubmitted was not the same evidence and was not applicable to the doctrine of Res Judicata.
4. Different Evidence: Same Document with Different Applications
In the invalidation case (No. 17987), the requester submitted Evidence 7 and Evidence 8 to challenge the inventive step of claim 1 of the patent involved. In the prior decision No. 16576 on the same patent, the issue of whether claim 1 is inventive with respect to D1 (i.e., Evidence 7) and D2 (i.e., Evidence 8) has been examined. However, in the previous decision, based on a comparison between “reference bump 23” of D1 and the "ejecting portion" of claim 1, it is determined that the two are not the same, and then concluded claim 1 is inventive over D1 in view of D2. Differently, in the post-invalidation case, the requester applied Evidence 7 by way of comparing “ear piece 25” with the "ejection portion" of claim 1. Therefore, the PRB opined that the specific evaluation way by the combination of Evidence 7 and Evidence 8 in the post-invalidation case was not the same as that used in the previous decision. Thus, the reason of invalidation of claim 1 for lack of inventiveness over the combination of Evidence 7 and Evidence 8 does not apply Res Judicata.
Although the evidence submitted in the two invalidation requests are the same, the way in which the evidence used is not the same when commenting on the specific technical features, resulting in the evidence being substantially different and not belong to the same evidence.
WOULD NEW EVIDENCE AUTOMATICALLY TRIGGER NO APPLICATION OF RES JUDICATA
As known, evidence, as the factual basis, is of great significance to the parties in their litigation activities, to safeguard their legitimate rights and interests, to find out the facts of a case, and to correctly judge the case according to law. This explains why the PRB and courts adopted strict standards for the identification of the same evidence in applying the doctrine of Res Judicata.
The invalidation decision (No. 4W108697) is a decision made by the PRB in response to the invalidation request filed again by the same requester, wherein the reason for insufficient disclosure of the specification was raised once again. Along with the request, the requester submitted two pieces of evidence, Evidence 1 and Evidence 2, both of which were textbooks, to support the allegation of insufficient disclosure. Evidence 1 was newly submitted evidence and not filed along with the first invalidation request (Invalidation Decision No. 37539). The requester raised the same reason that nuclear magnetic resonance proton (HNMR) spectroscopy is an important means for characterizing organic compounds, while the description of the patent does not provide any HNMR data of the exemplified compounds and therefore insufficiently disclosed the claimed compounds. In the invalidation decision 4W108697, the collegiate panel held that the requester submitted new evidence, and thus Res Judicata was not applicable.
The actual situation is that in addition to Evidence 1 and Evidence 2 submitted by the requester, it is not difficult for those skilled in the art to find other similar textbooks or works of literature to illustrate the importance of HNMR spectroscopy in the characterization of compounds. However, no matter what form of evidence, the fact that they want to prove has not changed, that is, the common knowledge that HNMR spectroscopy is important in the characterization of compounds. The newly submitted evidence did not add any contents or add any additional interpretation to the contents of the description of the patent in question. The fact that PRB reexamined has not changed. The issue of PRB reexamined, that is, whether the description is sufficiently disclosed has not changed. In such a case, the author believes that it applies Res Judicata. Otherwise, as long as new evidence is submitted, the doctrine is not applicable, and the requester or other persons can endlessly raise the same grounds for invalidation. If so, the PRB will examine the same issue endlessly, and the patentee will respond endlessly.
In the author's opinion, judging the same evidence in the application of Res Judicata requires judging whether the newly submitted evidence has changed the facts of the previous decision, and shall not be confined to the form of evidence itself. In Beijing Sihuan Pharmaceutical v. Qilu Pharmaceutical, one of the representative cases issued by the People’s Supreme Court in 2018, in invalidation procedure, Qilu Pharmaceutical submitted a piece of external evidence, an appraisal report, to prove that the experimental data showing the insecticidal activity in Example 5 of the patent at issue is not true. In the litigation procedure, Qilu Pharmaceuticals still raised the issue that the experimental data of Example 5 was not true, but based on the formula described in Example 5 by mathematically derivation to prove the experimental data recorded in the specification are not true. The court opined that the external evidence and the internal evidence were directed to the same issue, and no new evidence was added, only that the logic of proof and the method of argumentation were different, and thus applying the doctrine of Res Judicata . Meanwhile, the court commented that the trial of essentially the same issue would inevitably result in a waste of administrative and judicial resources.
The above administrative litigation case has not the same circumstances as that of invalidation decision 4W108697. However, there is a commonality between the two cases in judging Res Judicata, that is, judging whether the facts of the trial have changed and whether the issues of the trial are substantially the same.
CONCLUSION
The establishment of the patent invalidation system essentially focuses on the social benefit as the nature of the system and the function of resolving disputes. During the operation of the invalidation system, neither the doctrine of Res Judicata in civil lawsuits or the doctrine of determination of administrative decisions can be simply applied, nor should repeated request for invalidation of patents be reviewed based on the same evidence and the same reason. When judging the application of Res Judicata, one should not stick to the literal expression of "the same evidence," but need to substantially examine whether new evidence brings new facts or new issues and whether it has not been reviewed in the prior decision, in order to avoid repeated trials of the same facts and the same reasons, free of consuming human, material and financial resources, as well as unhelpful consumption of social resources.
[1] Article 45 of the Patent Law of China stipulates that “Where, starting from the date of the announcement of the grant of the patent right by the patent administration department under the State Council, any entity or individual considers that the grant of the said patent right is not in conformity with the relevant provisions of this Law, it or he may request the Patent Reexamination Board to declare the patent right invalid.
[2] (2009) Beijing People’s High Court Judgement No. 725
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