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AMENDED EXAMINATION GUIDELINES FOR PATENT CANCELLATION ACTIONS AND EX-OFFICIO EXAMINATIONS
The Intellectual Property Office announced amendments to its Patent Examination Guide-lines, Part V: Cancellation Actions and Ex-Officio Examinations on 25 July 2006, which took effect immediately.
The amendments mainly focus on the follow-ings:
5.1 Examination Principles
Examination Based on Written Documents
A patent cancellation proceeding, including both action filing and defenses, is in principle to be conducted on the basis of written documents. The examination of a cancellation action should in principle be based on ex-amination of documentary information sub-mitted by both parties. But, the in-charge examiners may also take into account the outcome of interviews, experiments, models, samples, or on spot inspections.
The Petitioner's Right of Disposal
Any person who deems that a granted patent violates the Patent Act may file a cancellation action. A cancellation petitioner should sub-mit to the Patent Authority a cancellation pe-tition stating the grounds for cancellation, and submitting evidence in support of such grounds, as provided for by Articles 67, 107 and 128 of the Patent Act. Thus, the decision as to whether to institute a cancellation action, and the scope of such an action, are entirely up to the petitioner.
Defining the Points at Issue
The first step in examining a cancellation ac-tion is to define the points at issue as identified in cancellation brief(s) and defense briefs statement submitted by both parties, include points related to laws, fact and evidence. These points should be defined and arranged before conducting examination. Subsequent procedure and examination of the cancellation action shall be conducted with respect to the points at issue thus defined.
Investigation of Evidence within Scope of Points at Issue
When examining a cancellation action, the Patent Authority may not itself introduce new grounds or new evidence which have not been asserted by the parties, nor adduce new evi-dence. Nevertheless, the Patent Authority shall, when necessary to verify the fact, in-vestigate evidence within the scope of the points at issue. If evidence investigation is made within a reasonable scope by telephone, a record of the telephone interview must be made and placed in the file of the cancellation case so that the investigation result can be taken into consideration. If necessary, a written request may be made to the inter-viewee asking for related information.
Power to Demand Clarification
If one party's written brief contains unclear statement with respect to the fact in dispute (such as the law provisions invoked, facts stated, or evidence produced etc.), the exam-iner should instruct the concerned party to clarify the statement. However, to avoid dis-putes, the examiner may not instruct a party to "add" or "additionally enumerate" (or similar wording) new grounds or new evidence.
5.3 Evidence
Burden of proof
The burden of proving an allegation should be borne by the party making the allegation. With respect to the same fact, the party making an allegation about such fact should first produce evidence; if the evidence thus produced has proven the alleged fact, the burden of proof will then shift to the other party. If the other party is unable to produce evidence sufficient to rebut the alleged fact, such fact be deemed having been confirmed; if the evidence pro-duced by said party can sufficiently rebut the alleged facts, the burden of proof will be shifted back to the party making the allega-tion.
Free Evaluation of Evidence (freie Beweiswürdigung)
The Patent Authority's judgment as to the probative force of evidence is not bound or restricted by statutory provisions, but based on its free judgment. To avoid arbitrary decisions, the Patent Authority should carefully consider all the information contained in the cancella-tion brief and the defense brief, as well as the outcome of its investigation of evidence (in-cluding the allegations made by both parties, the admissibility and probative force of evi-dence, and acceptance or rejection of evidence etc.); it should judge the veracity of the alleged fact according to objective, logical and em-pirical principles, and it should record its judgment and the supporting reasons in the examination decision. In addition, when as-sessing the probative force of evidence based on principles of reasoning, the decision should be based on the precise and reliable rules which are objective and in line with life ex-perience.
Supplementary Evidence and New Evidence
Supplementary evidence refers to relevant evidence based on the same underlying fact, the purpose of which is to reasonably strengthen the probative force of the original evidence. New evidence refers to those which go beyond the scope of the original points of dispute and which does not relate to the same underlying facts as the original evidence. Prior to issuing a decision for a cancellation action, all grounds and evidence argued and submitted by the cancellation petitioner should be examined, regardless of whether such evidence is supplementary evidence or new evidence. In addition, if a decision issued by the Patent Authority for a cancellation case is revoked by the administrative appellate agency and the case is remanded to the Patent Authority for a new examination, any sup-plementary evidence or new evidence should be considered, and the other party should be instructed to submit a defense.
Authentication of Documentary Evidence
Where evidence submitted in support of a cancellation action is in documentary form (such as publications, Uniform Invoices, con-tracts, import/export documents, etc.), origi-nals should be submitted and be kept by the Patent Authority. They should be returned to the concerned parties until a decision is ir-revocably rendered for the cancellation action. If a party needs such originals for other pur-poses, the Patent Authority may return the same after verifying their authenticity.
Foreign-language Documents and Their Chi-nese Translations
Documents filed should be in Chinese lan-guage. Where a certification document is prepared in a foreign language, the Patent Authority may, as it considers necessary, in-struct the applicant to submit a complete or excerpted Chinese translation. Where evi-dence is in a foreign language, the Patent Authority may instruct the concerned party to submit a complete or excerpted Chinese translation of the specific portions of the document, that are relevant to the facts to be proven. If foreign-language documentary evidence has clearly disclosed drawings that are sufficient for comparison purposes and examination can be conducted without refer-ence to a Chinese translation, it is not neces-sary to submit a Chinese translation. A Chi-nese translation is not itself the evidence; if a Chinese translation is inconsistent with the foreign-language original, or if a party fails to provide a Chinese translation before the deadline for doing so, the evidence should be examined on the basis of the foreign-language document.