The Patent Reexamination and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) invalidated the CN Invention Patent No. 201310567987.0 (the ’987 patent)[1] because the patentee failed to submit a request for grace period for a novelty art (“the Request”) within two months after the patentee knew or should have known about the novelty art. The novelty art is an article published within the grace period (i.e., within six months before the priority date of the ’987 patent), and all the inventors of the ’987 patent are also authors of the article. In addition, the article was cited by the patentee for related projects after the ’987 patent was granted. Therefore, the PRID found that the patentee knew about the novelty art at least when the patentee cited the novelty art. The PRID further found that 1) the patentee should have known the novelty art would anticipate the claims of the ’987 patent; and 2) it is the patentee’s responsibility to file the Request in time after the patentee knew or should have known about the novelty art after the application was filed.
The authors wish to acknowledge the contributions of paralegal, Andry Dong, as an author for this blog.
Andry Dong is a paralegal in Perkins Coie’s Shanghai office. She presently assists on over 400 patent prosecution matters, including managing deadlines, serving as a liaison with U.S. colleagues, and communicating with clients and foreign counsels. Andry also provides paralegal support for the firm’s patent prosecution within China, such as preparing and filing prosecution documents.
[1] See, http://36.112.95.124/reexam_out2020New/searchdoc/decidedetail.jsp?jdh=52508&lx=wx