[Jian Xu] Submitting third party opinion against pending patent applications in China

What can you do if you find a published Chinese patent which might threat your product/business once granted? You cannot initiate an invalidation procedure yet because it is geared toward granted patents, nor can you file an opposition because China does not have opposition proceedings for patents. So, what you can do is to submit an public opinion as a third party to SIPO on the application of the invention patent to challenge the validity and / or the wording of the invention patent. This is similar to the invalidation procedure but a little different. The public opinion should be: 1) filed after the publication of the application and before the publication of the grant; 2) with reasons for challenging the conformity with the provisions of the Patent Law. The examiner shall consider the public opinion during the course of the substantive examination, but it’s not required for the examiner to inform you of the result. 


The key is to provide really good prior art to challenge the application, and draft a concise comparation to let the examiner quickly understands the lack of novelty/inventiveness without wasting the time of the examiner. It's equally important to identify the examiners for the subject patent and try to communicate with them if possible via phone. Otherwise, you might run the risk that, if the examiner doesn’t accept the challenge reasoning then the China Patent Office might not accept the same reasoning if it is used in the invalidation procedure after the grant of the patent.

Regulations for the third party opinion listed below for your reference.

According to the Implementing Rules of the Patent Law:

Implementing Rules of the Patent Law of the People's Republic of China (Revised in 2010)

Article 48 Any person may make submissions and give an explanation of the reasons for such submissions to the patent administrative authority under the State Council regarding an application for an invention patent that does not conform to the provisions of the Patent Law from the date of publication of such patent application until the date of the public announcement that a patent right has been granted.

And the Guidelines for Patent Examination 2010

4.9 of Chapter 8 in Part II Handing of Public Opinion

The observations submitted by anyone to the Patent Office on an invention application not in conformity with the provisions of the Patent Law shall be included in the application file, and the examiner shall take them into consideration in the course of substantive examination. It is not necessary for the examiner to consider the observation submitted after the issuance of Notification to Grant Patent Right. The handing of the observation submitted by the public does not need to be notified to the public concerned.