Filing an Invalidation Action is oftentimes a useful tool to defend the defendant’s interests at highest level in a patent related legal dispute. It is thus worth a deeper look on some aspects of Invalidation Actions.
During the time period from January 1, 2021 till June 30,2022, statistics reveal that there were published in the Official Gazette 509 Decisions on Invalidation Actions, among which 271 were rendered against utility model patents granted upon fulfillment of the formalities, and 178 and 60 decisions were rendered on Invalidation Actions filed against invention and design patents, respectively. Please see Chart 1 below.
1. Invalidation Petitioner
From Table 1 and Chart 2 below, one may find that 60% of the invalidation actions were filed by natural persons.
2. Patent Owner
It is found that most of the patents against which invalidation actions were filed are owned by what are called local natural persons or legal entities. As shown in Figure 3 below, most of the utility model patents addressed in invalidation actions are owned by local natural persons or legal entities and six are owned by foreigners among which four are owned by natural persons or legal entities originating from China. Two thirds of the invention patents addressed are owned by local natural persons or legal entities and one third is owned by foreigners.
3. Countries from which invention patent owners originate
One third of the invention patents are owned by natural persons or legal entities from the US and Japan, respectively, as shown in Chart 4 below.
4. Examination period
The examination period is calculated from the date when an invalidation action is filed with TIPO till the date TIPO issues an invalidation decision. As shown in Table 2, 80% of the decisions on invalidation actions against design patents are rendered within 1 year. As to utility model patents, half of the decisions are rendered within one year. The time period needed for examining invalidation actions against invention patents is generally within two years.
5. Success rate
Table 3 shows the success rate of invalidation actions.
The success rate of revocation of utility model patents via invalidation actions is the highest, i.e. around 66%, which is mostly because a utility model patent is not subject to substantive examination. The success rates of revocation of invention patents and design patents are both around even.
6 Others
Some of the invalidation actions are dismissed due to the fact that the claims declared to be invalid have been canceled in another case and are already non-existent. Moreover, a decision on an invalidation action may cancel all or part of the claims of a patent. Please see table 4 for more information.
It is evident from Table 4 that the ratio of the invalidation petitioners partly winning and partly losing invalidation actions is less than 10%.