Editor's Note
In the context of technology R&D and management, preventing patents from being invalidated is a key aspect of patent risk management. However, in practice, there exists a counterintuitive phenomenon whereby patent holders voluntarily initiate invalidation proceedings against their own patents, representing a "self-imposed risk" behavior. While existing studies explain this from a legal perspective—viewing the invalidation process as an opportunity to proactively amend patent claims and enhance stability—Dr. Jiang Qimeng and Professor Zhu Xuezhong from our college adopt a management perspective, using a multi-case study approach to analyze the drivers, process mechanisms, and effects of this behavior. The study was published in R&D Management, Issue 5, 2022. Below is the abstract.
I. Introduction
The behavior of patent holders voluntarily initiating invalidation proceedings against their own patents is a distinctive practice in China's intellectual property management. This phenomenon arises from the fact that China has not adopted post-grant patent amendment procedures, as established in major foreign jurisdictions. Consequently, patent holders are unable to directly correct errors in granted patents, and the invalidation procedure becomes an alternative mechanism, granting patent holders standing to file invalidation requests as a substitute for post-grant amendment procedures. However, this self-initiated invalidation behavior differs from conventional patent invalidation risk management strategies. In such situations, patent holders exhibit risk preference, actively initiating invalidation proceedings to create exposure to risk. Furthermore, the invalidation examination process incorporates both the principle of request and ex officio examination, enabling examiners to review claims, grounds, and evidence beyond the scope requested by the patent holder. This may result in invalidation outcomes exceeding the patent holder’s expectations, leading to greater risks and uncertainties for the patent rights—contrary to the objectives of risk management theory, which seeks to reduce the probability and adverse impact of invalidation risks.
Accordingly, this study raises the following research questions: Why do patent holders initiate invalidation proceedings against their own patents? What is the process of such self-initiated invalidation? What are the outcomes of this behavior?
The innovations of this paper are twofold: First, it applies risk management theory to the process mechanism of patent holders initiating invalidation proceedings against their own patents, providing a theoretical explanation for the phenomenon of "self-imposed risk"; second, it clarifies the function, positioning, and logical connections of this behavior within the patent invalidation risk management system, thereby enriching the theory and practice of patent risk management.
II. Research Design
This study adopts risk management theory, incorporating the "risk identification—risk assessment—risk response" framework into the analysis of the self-initiated invalidation behavior mechanism. Utilizing a multi-case study approach, the study selects 11 cases of self-initiated invalidation from publicly disclosed Chinese patent invalidation decisions through theoretical sampling. Subsequently, first-hand interview data and secondary official documents were collected. Using grounded coding techniques, both within-case and cross-case analyses were conducted, yielding 115 concepts, 26 subcategories, and 9 main categories. Ultimately, the "process mechanism of patent holders' self-initiated invalidation behavior" was identified as the core category organizing the coding results.
III. Model Interpretation and Research Findings
This paper horizontally explains the process mechanism of self-initiated invalidation behavior from two dimensions: patent application and post-grant stages.
First, at the application stage, invalidation risks manifest as claim overlap risks. In practice, applicants often adopt a dual application strategy (invention and utility model) to expedite patent grants and meet dual protection needs. In such cases, the utility model patent is granted and applied first, and when the invention patent enters substantive examination, the applicant proactively amends the claims to avoid duplicate grant issues and to secure the authorization of both patents. However, due to the lack of post-grant amendment rules, applicants are unable to fully resolve the overlap problem. The office action notice prompts applicants to passively recognize the remaining claim overlap risks. Awareness of the economic potential of the involved patents further incentivizes applicants to control invalidation risks, ultimately opting to use the invalidation procedure to delete overlapping claims in the granted utility model patent, thereby ensuring the successful grant of the invention patent.
Second, at the post-grant stage, invalidation risks manifest as patent stability risks or claim ambiguity risks, primarily resulting from formal examination errors or deficiencies in substantive examination. The economic benefits generated from patent implementation drive patent holders to actively perceive invalidation risks by applying for patent evaluation reports, seeking published documents, or analyzing published patents. Upon discovering invalidation risks, driven by the goal of maintaining the sustained economic benefits of granted patents, the patent holder attempts to control the invalidation risks, but such attempts often fail due to legal constraints. Ultimately, the patent holder chooses to eliminate the invalidation risks through self-initiated invalidation proceedings to maintain the sustained economic value of the patent.
Based on the above, this paper proposes the following seven research propositions:
Proposition 1: Factors of invalidation risk include deficiencies in substantive examination systems, errors in formal examination, and errors in claim amendments.
Proposition 2a: At the application stage, patent examination behavior prompts patent holders to passively perceive and discover invalidation risks.
Proposition 2b: At the post-grant stage, the economic benefits of patents prompt patent holders to actively perceive and discover invalidation risks.
Proposition 3: Risk assessment based on the economic value of patents drives patent holders to make risk management decisions.
Proposition 4: Patent system constraints drive patent holders to choose self-initiated invalidation as a response to invalidation risks.
Proposition 5a: When the consistency between the invalidation outcome and the intended objective is high, the effect of self-initiated invalidation is to expand economic benefits.
Proposition 5b: When the consistency is low, patent holders will seek alternative supplementary remedies after self-initiated invalidation.
IV. Conclusion and Implications
Using risk management theory and a multi-case study based on grounded theory, this paper proposes a process mechanism model for patent holders' self-initiated invalidation behavior. The key conclusions are as follows:
First, invalidation risks originate from three types of risk factors: formal examination errors, deficiencies in substantive examination, and errors in claim amendments. These develop into three forms of risks—patent stability risk, claim ambiguity risk, and claim overlap risk—constituting the objective reasons for self-initiated invalidation behavior. Patent holders choose self-initiated invalidation to verify legal validity, eliminate claim ambiguities, or resolve claim overlaps, aiming to ensure the legal stability of the patent right.
Second, the self-initiated invalidation process follows three stages: risk identification, assessment, and response. Patent examination experience and economic benefits lead patent holders to perceive and identify invalidation risks, and risk assessment based on patent economic value further guides risk management decisions. Due to systemic constraints, general risk response measures cannot effectively eliminate invalidation risks, while the invalidation procedure offers a lawful path for amending claims and mitigating such risks.
Third, the effects of self-initiated invalidation behavior vary depending on the outcome. When the result aligns with the holder's expectations, the behavior can expand the patent's economic benefits; otherwise, the holder will seek alternative remedies.
This study reveals the specific paths through which self-initiated invalidation can serve as a preemptive measure for patent invalidation risk management, providing theoretical and practical support for improving patent risk management systems.
In terms of institutional implications, although self-initiated invalidation partially compensates for the lack of post-grant amendment procedures in China, it cannot fully fulfill the function of correcting patent errors due to procedural limitations. Therefore, China should introduce a dedicated post-grant patent amendment mechanism.
In terms of management practices, patent holders may consider shifting their risk control focus from passive or reactive measures to proactive, preventive measures, using self-initiated invalidation to resolve risks when potential invalidation risks are identified.
Keywords
Patent Invalidation; Self-Initiated Invalidation; Risk Management; Grounded Theory; Patent Amendment
Author Profiles
Zhu Xuezhong, Distinguished Tenured Professor, Tongji University
Jiang Qimeng, Ph.D. Candidate, Shanghai International College of Intellectual Property, Tongji University
Original Source: R&D Management, Issue 5, October 2022
