SPC Case-Library Ruling: Unaccepted Claims May Be Deleted at a Patent Invalidation Hearing and Examination Continues
The list of case-library entries published by the Supreme People's Court Intellectual Property Tribunal on 27 January 2026 shows that (2022) Zui Gao Fa Zhi Xing Zhong No. 870, a German patent company's action against the China National Intellectual Property Administration (CNIPA) and a Japanese company over the invalidation of an invention patent, has been selected as a reference case in the People's Court Case Library. The headnote states that when, in the oral hearing of a patent invalidation review, CNIPA finds some amended claims unacceptable, it must allow the patentee to delete the unacceptable claims from the current claim set and proceed on the remaining acceptable claims.
Whether the deletion is declared orally at the hearing or filed in writing, CNIPA should in general accept it; where replacement pages are not filed at the hearing it may set a deadline for filing them, failing which the patentee may be treated as not having amended the claims. The facts: on 16 August 2017 the Japanese company requested invalidation of a liquid-crystal display patent, and on 9 October 2017 the patentee filed observations with a full replacement set of claims; at the hearing the panel announced that the replacement set did not comply with the Patent Examination Guidelines on amendments at the invalidation stage, the patentee declared at the hearing that it abandoned claims 6, 7 and 24, and the panel refused the deletion, examined the patent as granted and on 5 March 2018 declared it wholly invalid in Decision No. 34935. The first-instance court dismissed the patentee's action on 21 July 2021; on 25 December 2024 the Supreme People's Court set aside both the first-instance judgment and the decision and ordered CNIPA to re-examine the request. The judgment adds that where the citation relationships between retained and deleted claims are complex and the hearing cannot proceed without replacement pages, the panel may require the patentee to prepare them at the hearing, adjourn briefly for that purpose, or set a reasonable deadline and schedule a further hearing.
The headnote resolves the most common procedural trap in invalidation practice: when an amended claim set is partly accepted and partly refused, must the patentee fall back to the last acceptable version or even the claims as granted? The Supreme People's Court answers that the patentee has a choice and may delete the refused claims orally at the hearing and continue on the rest, because a deletion neither goes beyond the original disclosure nor broadens the scope of protection, and it only benefits the public and examination efficiency, so no further restriction is warranted. As a case-library entry the rule now serves as a reference for CNIPA panels and courts at all levels, and it is a procedural authority that foreign patentees can cite directly when defending invalidation requests in China. J&C recommends that patentees filing amendments in invalidation proceedings prepare two versions in advance: the full amended set and a fallback set with the claims most likely to be refused removed; if the panel announces at the hearing that some claims are unacceptable, declare the deletion of the specific claim numbers orally on the record, ask the panel to set a deadline for the replacement pages and file them on time; where the citation structure is complex, prepare the replacement pages at the hearing or ask for a short adjournment.
