Recently, the Beijing Intellectual Property Court made a first instance decision on the administrative dispute of the plaintiff Apple Computer Trading (Shanghai) Co., Ltd. (hereinafter referred to as Apple) vs. the defendant China National Intellectual Property Administration and the third party Xi'an IWNCOMM Co., Ltd. (hereinafter referred to as IWNCOMM) over the invalidation of the invention patent right, which rejected the plaintiff Apple's claim and upheld the decision No. 31501 on the examination of the invalidation request previously made by the former Patent Reexamination Board of the State Intellectual Property Office (the former PRB), maintaining the validity of the invention patent right entitled "a method for secure access to wireless LAN mobile devices and data security communication" (Patent No.: 02139508. X).
The patent involved in the case was a Chinese invention patent application filed by IWNCOMM in November 2002, and was granted in March 2005. Since then, IWNCOMM has filed patent applications for the technology in more than ten countries and regions, including the United States, Japan, South Korea and Europe, and has been granted successively.
In August 2015, Sony filed a request for invalidation to the former PRB for the patent involved. After hearing, the former PRB made an examination decision in February 2016 to maintain the validity of the patent right involved. Sony did not file an administrative lawsuit against the above decision within the statutory period.
On May 10, 2016, Apple filed a request for invalidation to the former PRB for the patent involved. After hearing, the former PRB made a decision to maintain the validity of the patent right involved in March 2017. Apple filed an administrative lawsuit with Beijing Intellectual Property Court against the decision. Apple claimed that the accused examination decision wrongly excluded the notarial documents submitted by it before the end of the oral examination debate to perfect and prove the authenticity and publication date of the reference documents.
Regarding the above claim, the Beijing Intellectual Property Court held that, in accordance with the provisions of Article 66 of the Implementing Regulations of the Patent Law of the 2002 edition and Section 4.3.1, Chapter 3, Part IV of the Guidelines for Patent Examination, where the requestor supplements the evidence one month after the date of filing the request for invalidation, the Patent Reexamination Board will generally not consider it, except for the following circumstances:……(ii) before the end of oral examination debate, submit common sense evidence in the technical field such as technical dictionaries, technical manuals and textbooks, or notarial certificates, originals and other evidence used to perfect the legal form of evidence, and specify the relevant reasons for invalidation in combination with the evidence within the time limit.
According to the facts found, Apple submitted several notarial documents after one month from the date of invalidation request and before the end of oral examination debate to prove the authenticity and publication date of the webpage evidence submitted within one month. However, some contents of these notarial documents had not been submitted within one month from the date of request, such as the contents proving the publication date of the reference document and the authoritativeness of the website publishing the reference document, etc., and the contents submitted beyond the time limit did not belong to the common sense evidence referred to in the above Guidelines for Patent Examination or the evidence used to perfect the legal form of evidence, so it was not improper for the accused decision not to accept part of the contents submitted beyond the time limit.
The first instance judgment determined the admissibility standard of the overdue evidence submitted by the requestor in the invalidation procedure, that is, where the notarial certificate submitted by the requestor one month after the date of invalidation request to prove the publication date of the reference document submitted within one month exceeds the proof content of the evidence within the time limit, it does not belong to the supplementary evidence improving the legal form of evidence and shall not be accepted.
In addition, the first instance judgment upheld the evidence standard of the former PRB, i.e. where the facts to be proved are proved by network information, if the network information source proved by the "notarial certificate" evidence beyond the time limit of proof is different from the network source of the evidence content within the time limit, then the notarial certificate does not belong to the exception of perfecting the legal form of evidence.
Accordingly, the Beijing Intellectual Property Court held that the evidence of the accused decision was conclusive, the applicable law was correct and in line with legal procedures. The plaintiff Apple's claim lacked facts and legal basis, and therefore the court refused to support it and rejected Apple's claim.
