I. Introduction

In Chinese patent practice, the application process generally comprises filing, preliminary examination, substantive examination, rejection/grant, and reexamination. Pursuant to Article 41, paragraph 1 of the Patent Law of the People’s Republic of China, when an application is rejected, the applicant may request reexamination within three months from the date of receipt of the rejection notice.

However, reexamination does not necessarily lead to a favorable outcome. If the reexamination decision upholds the rejection, the applicant typically faces two choices: to file an administrative lawsuit with the court, or to directly file a divisional application. This article focuses on analyzing why, in cases involving important inventions or a series of related inventions, it is advisable to prioritize administrative litigation after an unfavorable reexamination decision.

II. Legal Basis and Procedural Characteristics

1. Remedies After Reexamination Upholds a Rejection

According to Article 41, paragraph 2 of the Patent Law of the People’s Republic of China, if a patent applicant is dissatisfied with the reexamination decision issued by the China National Intellectual Property Administration (the “CNIPA”), they may file a lawsuit with the people’s court within three months from the date of receiving the decision.

This means that, after the reexamination decision upholding the rejection, if the applicant believes that the examiner erred in the application of law, factual findings, or examination standards, they may file an administrative lawsuit with the competent Beijing Intellectual Property Court.

2. Characteristics of Administrative Litigation

(1) Parties to the Action and Jurisdiction

• Plaintiff: Patent applicant (individual, legal entity, or other organization).
• Defendant: China National Intellectual Property Administration (CNIPA).
• Jurisdiction: The Beijing Intellectual Property Court, who has exclusive jurisdiction over all first-instance administrative cases nationwide concerning patent grant and validity confirmation.

(2) Time Limit for Filing

The plaintiff must file suit within three months from the date of receipt of the reexamination decision; failure to do so will forfeit the right to litigate, and the rejection will automatically become final.

(3) Scope and Standards of Review

Administrative litigation is not a re-examination of the patent application itself; it is a judicial review of the legality and reasonableness of the decision to uphold the rejection. The court will focus on:

• Accuracy of factual findings;
• Correctness of legal application;
• Legality of procedures.

In some cases, the court may adopt standards for assessing inventiveness similar to those used by CNIPA, but it often conducts more detailed analysis of whether “technical motivation,” “technical effects,” and “prominent substantive features” exist, thereby providing applicants with an opportunity to reverse the outcome.

III. Value Analysis of Administrative Litigation

1. Extension of the Divisional Filing Period and Optimization

During administrative litigation, an applicant may file a divisional application at any time before the issuance of the second-instance judgment. This will bring additional 1-2 years for the applicant to consider the technical solution of the divisions. In contrast, when filing a divisional directly after reexamination, it must be done within three months.

Administrative litigation thus extends the divisional filing period, which is beneficial for refining complex technical claims, conducting preliminary market research, and analyzing competing technical solutions. Although claims cannot be amended during litigation, claims in a divisional application may be revised, yielding the same substantive effect as filing a divisional directly after reexamination, but with better preparation time for the applicant.

2. Protection of Important Inventions

For inventions with high commercial value or core technological significance, abandoning administrative litigation means the rejection becomes final and the application process terminates. This may result in the technical solution being denied patent protection, a disadvantage in market competition, and potential adverse impact on overseas filing strategies.

Through administrative litigation, applicants can seek an independent judicial assessment of standards such as inventive step, insufficient disclosure, and support. In recent years, the Beijing Intellectual Property Court has overturned reexamination decisions upholding rejections in certain cases, allowing applicants a new opportunity for examination.

3. Rebalancing Examination Standards

Administrative litigation provides a “third-party” perspective—judicial review by the court—which may correct overly strict or overly broad interpretations of facts or law during examination. Examples include:

Assessing inventive step by over-combining prior art;

• Requiring a level of disclosure beyond that prescribed in the Implementing Regulations of the Patent Law;
• Failing to fully consider the correspondence between embodiments in the specification and the claims when assessing support requirements.
• Such rebalancing of standards is particularly impactful in patents involving chemical materials or biopharmaceuticals.

4. Enhancing Negotiation and Competitive Advantages

Even if the court ultimately does not rule in favor of the applicant, litigation can extend the lifecycle of the application, providing a time window for technical optimization, market strategy adjustment, or negotiation with competitors. The litigation record also serves as external evidence of technical value, supporting financing, licensing, or cooperation.

IV. Opportunity Analysis for Administrative Litigation

1. Situations Suitable for Filing Administrative Litigation

Filing an administrative lawsuit often requires greater input from the agent in analyzing the decision, devising counterarguments, and formulating plans, which increases agency and legal fees. Therefore, litigation is not recommended for every reexamination decision or application. In the author’s opinion, administrative litigation should be considered when the patent application meets the following criteria:

• Benchmark or pioneering technology – key technology critical to the company’s core business with substantial market potential;
• Series of inventions – multiple related applications under the same technical system, where the grant or refusal of one impacts overall protection;
• Simultaneous overseas filings – corresponding applications or granted patents in jurisdictions such as the US, Europe, or Japan, where Chinese grant status significantly affects global strategy.

2. Further Strengthening of Technical and Legal Arguments

Through multiple rounds of office action responses and reexamination, applicants often accumulate substantial defense strategies, evidence, and reference materials. During litigation, these should be strengthened (e.g., prior art searches, experimental data, expert opinions), because courts tend to examine facts and evidence more closely than the reexamination stage, especially with respect to proving inventiveness and technical effects.

3. Balancing Costs and Benefits

The costs of administrative litigation include attorney fees, court fees, and time investment. For high-value potential technologies, litigation costs are justifiable in light of potential returns. If expected licensing revenue and market advantages are significant after grant, litigation is worth considering.

V. Strategic Recommendations

1. Principle of Prioritizing Administrative Litigation：For important technologies, series of inventions, or cases linked to overseas patent strategies, administrative litigation should be prioritized to seek an independent court judgment. In addition, during litigation, consider refining claim content for potential divisional applications as a backup strategy.

2. Parallel Actions：Make use of the time window before the issuance of the second-instance judgment to file a divisional application, enabling multiple protection paths to proceed simultaneously. In the litigation process, depending on the specifics of the case, consider supplementing technical arguments, expert testimony, and experimental data to enhance the court’s recognition of inventiveness and technical effects.

3. Time Management：Strictly adhere to the three-month period for filing suit to avoid losing litigation opportunities. Divisional applications must also be filed within the statutory deadline.

VI. Conclusion

Deciding whether to initiate administrative litigation after reexamination upholds a rejection is a pivotal point in patent portfolio strategy. Administrative litigation is not only a legal remedy but also a valuable opportunity for protecting core technologies, rebalancing examination standards, and strengthening competitive business strategies.

By prioritizing litigation and making parallel use of divisional applications, enterprises can maximize the potential for protection, ensuring their innovations gain a competitive edge in domestic and international markets.

Against the backdrop of an increasingly sophisticated patent system and judicial review that emphasizes technical expertise, sound litigation decisions are becoming an essential part of corporate intellectual property management—particularly when reexamination upholds a rejection, as this decision often determines the future fate of the technology.