Administrative Revocation and Invalidation Mechanisms

In general, the administrative review constitutes a forum outside a court, composed of a panel of experienced examiners and/or administrative judges, for reviewing the validity of a patent.  It allows for reviewing the patent on grounds which might render a patent invalid, most importantly, non‑compliance with the substantive patentability criteria.  Mechanisms for administrative revocation and invalidation are conducted inter partes, similar to the opposition, but they are generally not time‑bound.  In several countries, an administrative review may be initiated and conducted ex officio.

While post-grant opposition systems provide third parties to challenge patents at the administrative level, since the opposition period is limited, there could be cases where third parties recognize the needs of invalidating a patent only after the expiration of the opposition period.  It is often the case where the technology surrounding a patented invention is developed and commercialized only some years after the grant of the patent, and at that point, the validity of the patent calls attention of competitors.  The administrative review provides for a longer or a second window of challenging patents for anyone.  In some countries, the administrative revocation and invalidation is the only inter partes mechanism to challenge the validity of patents before the administrative body, such as in China, Japan, the Republic of Korea and the United Kingdom. 

Among the countries that have an administrative review mechanism, the procedural and substantive requirements have some common aspects, but are different in details.  Such differences may include: 

• the possibility of ex officio proceedings; 
• the onus of evidence for the person requesting the revocation; 
• the grounds for revocation; 
• the conduct of the review procedure; 
• the possibility to make  a revocation/invalidation request  after the expiry of the life time of the patent; 
• the standard for providing evidence;  and
• the composition of the reviewing board.

The administrative revocation and invalidation mechanisms provide for an inter partes review of the validity of a patent which is not limited to a certain period after the grant of the patent.   The rationale for an administrative review is similar to other administrative revocation mechanisms, such as opposition and re-examination.  It aims at increasing the quality of patents by providing a simple and inexpensive alternative to litigation, for any person.  It constitutes a forum outside a court, composed of a panel of experienced examiners and/or administrative judges, for reviewing the validity of a patent.  It allows for reviewing the patent on grounds which might render a patent invalid, most importantly, non‑compliance with the substantive patentability criteria.

No international treaty expressly regulates the substantive requirements with respect to various administrative revocation mechanisms such as opposition systems, re-examination procedures or other administrative revocation procedures available under the national/regional laws as such.  Countries are free to provide, or not to provide, such mechanisms in their national laws.  However, while substantive requirements are not dealt with in existing treaties, some general procedural requirements prescribed in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) and the Patent Law Treaty (PLT) may be applicable to such procedures.

TRIPS Agreement

Article 62.4 of the TRIPS Agreement provides that, where a Member’s law provides administrative revocation and inter partes procedures such as opposition, revocation and cancellation, they shall be governed by the general principles set out in Article 41.2 and 3.  Article 41.2 and 3 reads:

“2.          Procedures concerning the enforcement of intellectual property rights shall be fair and equitable.  They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.

“3.          Decisions on the merits of a case shall preferably be in writing and reasoned.  They shall be made available at least to the parties to the proceeding without undue delay.  Decisions on the merits of a case shall be based only on evidence in respect of which parties were offered the opportunity to be heard.”

Further, Article 62.5 states that final administrative decisions in the above procedures referred to under Article 62.4, including administrative revocation and inter partes opposition procedures, shall be subject to review by a judicial or quasi-judicial authority.  However, Article 62.5 further states that there shall be no obligation to provide an opportunity for such review of decisions in cases of unsuccessful opposition or administrative revocation, provided that the grounds for such procedures can be the subject of invalidation procedures.

In addition, as a general rule, according to Article 62.2, Members shall ensure that the procedures for grant, subject to compliance with the substantive conditions for acquisition of the right, permit the granting of the right within a reasonable period of time so as to avoid  unwarranted curtailment of the period of protection. 

Patent Law Treaty (PLT)

According to PLT Article 10(1), non-compliance with certain formal requirements with respect to an application may not be a ground for revocation or invalidation of a patent, either totally or in part, except where the non-compliance with the formal requirement occurred as a result of a fraudulent intention.  Those formal requirements are:  (i) form or contents of application (PLT Article 6(1));  (ii) formal requirements relating to request form, fees and priority document (PLT Article 6(2), (4) and (5));  (iii) form and means of transmittal of communications (PLT Article 8(1) and (3));  and (iv) language and signature of communications (PLT Article 8(2) and (4)).  Accordingly, once a patent is granted by a PLT Contracting Party, it shall not be revoked or invalidated on the grounds of non-compliance with the above formal requirements. 

In addition, PLT Article 10(2) provides that a patent may not be revoked or invalidated, either totally or in part, without the owner being given the opportunity to make observations on the intended revocation or invalidation, and to make amendments and corrections where permitted under the applicable law, within a reasonable time limit.  PLT Article 10(2) applies to all proceedings for the revocation or invalidation of a patent.  It therefore applies to proceedings before the Office, such as opposition, re-examination or other administrative revocation procedures as well as to proceedings before any other competent authority, including a court.  It also applies to all such proceedings irrespective of the grounds for revocation or invalidation, that is including substantive grounds, for example, lack of novelty. However, except as provided under PLT Article 10(1), the grounds on which a granted patent may be revoked or invalidated, such as lack of novelty, as well as any other aspect of such proceedings, are not regulated by Article 10(2) and remain a matter for the applicable law of the PLT Contracting Party concerned. 

Further, PLT Article 11 provides the extension of a time limit for an applicant’s action before the patent office under certain conditions, and PLT Article 12 requires Contracting Parties to provide reinstatement of rights where an applicant lost his rights because of the failure to observe a time limit, if the failure occurred in spite of due care required by the circumstances or was unintentional.  However, in accordance with PLT Rules 12(5)(vi) and 13(iv), no Contracting parties shall be required to grant a relief under PLT Article 11 or reinstatement of rights under Article 12 in respect of a time limit for an action in inter partes proceedings.  In other words, a Contracting party is free to provide, or not to provide, the extension of a time limit and/or the reinstatement of rights regarding a time limit for an action in inter partes opposition, inter partes re-examination or other inter partes administrative revocation proceedings.

However, when adopting these Rules, the Diplomatic Conference adopted Agreed Statement No. 5, stating that while it was appropriate to exclude actions in relation to inter partes proceedings from the relief provided by Articles 11 and 12, it was desirable that the applicable laws of the Contracting Parties provide appropriate relief in those circumstances which takes into account the competing interests of third parties, as well as the interests of others who are not parties to the proceedings.

• Summary table