Through the judgment (2021) Zui Gao Fa Zhi Xing Zhong No. 93, the SPC affirmed that new evidence submitted by the patent applicant or patentee in an administrative case involving patent granting and confirmation should generally be considered by the people's courts, thereby clarifying which type of evidence submitted by a patentee, an applicant or an invalidation petitioner in litigation proceedings should be examined.
This case is an appeal case filed against the Examination Decision on Invalidation Request ("invalidation decision") issued by the CNIPA. The appellant (i.e. the plaintiff in the first trial) is the patentee of invention patent No. 03135523.4, entitled "Medicine Automatic Packaging and Metering Device", the appellee (i.e. the defendant in the first trial) is the CNIPA, and the third party in the first trial is the invalidation petitioner.
In the first instance, in order to prove that its patent was inventive, the appellant provided seven new pieces of evidence to prove that during the invalidation examination proceeding, the CNIPA misunderstood the distinguishing technical features of the claims in the patent, chose the wrong prior art, and underrated the social contribution and commercial value of the patent. However, the court of first instance held that:
"A patent administrative case is to examine the legality of an administrative act made by the CNIPA and therefore should be based on the evidence on which the CNIPA made the administrative act, that is, the evidence submitted by the patentee or invalidation petitioner in the invalidation proceeding. As for the evidence newly submitted by the plaintiff in the first-instance litigation, these evidence documents were not submitted in the invalidation proceeding, and the plaintiff also did not give a reasonable explanation for not submitting them until in the litigation proceeding. Since these evidence documents are not the basis on which the CNIPA made the sued invalidation decision, they should not be used as a factual basis for the court to examine whether the sued invalidation decision is in conformity with the law, and thus should not be accepted. Therefore, the CNIPA's decision to invalidate the patent was upheld".
In the second instance, the appellant argued that the first-instance court's not considering the evidence was a procedural mistake, and it held that supplementary evidence 1-4 were about well-known common knowledge used to explain the concept of a specific technical term (to prove that its patent was inventive). The parties concerned have the right to correct, at any time, the interpretation of the technical knowledge made in the sued invalidation decision based on the well-known common knowledge in the art. Such well-known common knowledge evidence are in fact part of the knowledge of those skilled in the art and are not new evidence. Secondly, supplementary evidence 5-7 are formed after the sued invalidation decision was made and can prove the social contribution and commercial value of the technical scheme of the involved patent.
Regarding whether the relevant evidence should be examined, the SPC affirmed in the second-instance judgment that,
"Pursuant to Provisions of the SPC on Several Issues Concerning the Application of Law in the Trial of Administrative Cases Involving Patent Granting and Confirmation (I), where a patent applicant or a patentee submits new evidence in an administrative case involving patent granting and confirmation to prove that the patent application should not be rejected or the patent should remain valid, the People's Court shall generally examine such evidence. The administrative litigation procedure involving patent granting and confirmation is a judicial remedy procedure set up for the parties who are not satisfied with the administrative decision on the patent granting and confirmation. In order to prove the tenability of their claims, in the course of the litigation the parties are likely to provide new evidence that they have not provided in the administrative procedure. Where a patent applicant or a patentee provides evidence at this stage to prove that the patent application should be granted or that the patent should be valid, the people's court shall generally examine it because the patent applicant or patentee no long has any other remedy channels or measures. Where the invalidation petitioner provides new evidence in an administrative case involving patent confirmation to prove that the patent should be declared invalid, the people's courts generally do not examine it because the invalidation petitioner may submit a separate request for invalidation and the relevant evidence has exceeded the examination scope of the administrative invalidation decision. However, the invalidation petitioner may submit evidence that does not involve new facts or new reasons, evidence relating to the level of knowledge and cognitive ability of a person skilled in the art or a general consumer, as well as rebuttal evidence for rebuttal, etc, for examination. In the absence of a substantive examination of the seven pieces of supplementary evidence submitted by the appellant, the court of first instance did not accept the evidence merely on the grounds that the evidence were not the basis on which the CNIPA made the sued invalidation decision and thus should not be used as a factual basis for the court to examine whether the sued invalidation decision is in conformity with the law. The court of first instance was incorrect in not considering the evidence, and this court hereby corrects the mistake."
Through this case, it can be seen that in the examination of new evidence in administrative litigation, the SPC proceeded from the perspective of protecting the litigation rights of the parties, comprehensively considered the efficiency of the litigation and judicial costs, and fully protected the parties who no longer had any other judicial remedy channels or measures.
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