In an example of ex officio examination in the Patent Examination Guidelines, when the IPO deems that citation 1 mentioned in an invalidation statement does not sufficiently prove the lack of inventiveness of claim 1, and claim 1 has been deemed to be not inventive over a combination of citations 1-2 in a civil decision, the IPO may initiate an ex officio examination to determine whether claim 1 is inventive over the combination of citations 1-2.

Based on a patent litigation decision issued on September 5, 2019 (Case No.: 108 Xing Zhuan Su Xi No. 5), the Intellectual Property Court indicated that the example of ex officio examination in the Patent Examination Guidelines should not be interpreted and limited to only apply to the situations prescribed therein. During invalidation proceedings of the case, the patentee corrected a claim which was deemed to be invalid by incorporating another claim not mentioned in the invalidation statement. The Intellectual Property Court also indicated that if the IPO further deems that the corrected claim is still within the scope of the evidence for invalidation, even if no further reasons are provided by a requester of an invalidation action, an ex officio examination may be initiated after examining reasons and evidence not provided by a requester of an invalidation action but still within the scope of the invalidation statement, and the IPO shall notify a patentee to respond within a specified time period in accordance with the provisions of Article 75 of the Patent Act to ensure the right of the patentee.