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Applicants Need to Avoid Self-Conflicting Applications in China
Linda Liu & Partners
Most countries adopt a conflicting-application system to avoid double-patenting, and China is no exception. Such a major change was made in China when it amended its patent law for the third time in 2008 that even an applicant’s own application would be likely to constitute a conflicting application (hereinafter referred to as “self-conflicting application”). The change actually forces an enterprise to shorten its R&D period to 12 months (the priority period) from 18 months (from the date of filing to the date of publication) if it wants to file a patent application in China.
Novelty issues might arise due to an applicant’s own earlier application if the applicant comes from a country where no self-conflicting application system exists, and is not aware of the self-conflicting system in China when they start to prepare a patent application. The writer will briefly introduce China’s conflicting-application system and provide possible solutions.
I. What is the reason for amending regulations over conflicting applications in 2008?
The revision was aimed to prohibit double-patenting more strictly and make it easier to determine whether double-patenting may happen.
Specifically, according to the previous regulations, claims of an early application of an applicant must be compared with claims of a later application of the same applicant to prevent double-patenting of the two applications. According to the revised regulations, however, the whole application document of the early application must be compared with the claims of the later application (that is, the novelty standard is followed).
According to Introduction of the Third Amendments to the Patent Law, published by the Legal Affair Department of the State Intellectual Property Office of China (hereinafter referred to as “SIPO”), there are two major differences in the above two ways of comparison. First, from the perspective of difficulty in determination, the novelty standard is ubiquitous in patent laws all over the world, so it can be applied more conveniently. Second, from the perspective of effect in double-patenting prevention, novelty standard is apparently stricter, and it is therefore more effective in preventing double-patenting.
II. What applications can be conflicting applications?
According to Articles 22 and 23 the Patent Law of the People’s Republic of China, an early application should meet the following formal requirements if it is to constitute a conflicting application of a later application:
1. For a later application for an invention or utility model patent, the early application must also be one for an invention or utility model patent; an application for a design patent is not likely to constitute its conflicting application. Likewise, for a later application for a design patent, the early application must also be one for a design patent; an application for an invention or utility model patent does not constitute its conflicting application.
2. The early application must have been filed before the SIPO. In other words, an application filed before the intellectual property office of Hong Kong, Macao or Taiwan cannot constitute a conflicting application as such. A PCT application which was designated to enter China but actually has not entered China’s national phase does not possibly constitute a conflicting application.
3. The filing date of the early application (priority date, if a priority right is claimed) must be earlier than the filing date of the later application (priority date, if a priority right is claimed).
4. The publication date of the early application is not earlier than the filing date of the later application (priority date, if a priority right is claimed). That is, the publication date of the early application can be the same as the filing date of the later application. If the early application is one for an invention patent, the publication date refers to the date when the SIPO publishes it after the expiration of eighteen months from its date of filing. If the early application is one for a utility model or design patent, the publication date refers to the date when the SIPO announces the grant of the patent.
It is important to note that an early application can serve as a conflicting application once it has been published in China, regardless of whether it has been withdrawn or lost its rights before publication, which is different from the case in other areas, e.g. Europe.
III. What effects does a conflicting application have?
In China, a conflicting application can be used in assessments of novelty, not in assessments of inventive step. As shown in the following case, however, a claim is considered not to be novel in comparison with a conflicting application which is a reference if the claim differs from the reference only in that a feature of the claim is a result of direct substituting a conventional means for a corresponding means in the reference.
Re-Examination Decision No. 89622
The technical solution defined in claim 1 differs from the contents disclosed in Reference 1, a conflicting application, only in that “a surface larger than a semicircle” substitutes “a surface less than a semicircle”. The collegial panel held that claim 1 was not novel, because both surfaces functioned to disperse lights and thus to a person skilled in the art, this substitution was a direct substitution approach using conventional technical means.
IV. How to avoid self-conflicting applications in China?
It would be best for an applicant to know the self-conflicting system in China at an early time if he plans to file a patent application there and hopes not to be stumbled over the system. Suppose an applicant is preparing to file Application A in China. Prior to filing Application A, the applicant has to confirm whether his Application B—which has been filed or is ready to be filed in China, has an earlier priority date, and has not been published—discloses a technical solution defined in a claim of Application A. If so, the applicant needs to confirm whether Application A qualifies for claiming the same priority right that Application B claims. If so, Application A will have the same priority date that Applicant B has, and thus Application B will fail to be a conflicting application of Application A. If Application A is incapable of claiming the same priority right that Application B claims, the applicant may consider deleting the claim disclosed by Application B from Application A and incorporating it into Application B.
V. How to deal with lack of novelty due to conflicting applications?
What can an applicant do when a claim is dismissed for lack of novelty over a conflicting application? As mentioned above, a conflicting application is unacceptable for assessing inventive step. Thus, the defect of lacking novelty will be eliminated as long as the applicant adds features not disclosed in the conflicting application, even features in the prior art, to the claim.
What’s more, if the conflicting application is of the applicant’s own and is still pending, the applicant may consider deleting the claim from the current application, and incorporating it into the conflicting application or filing it again by means of a divisional application of the conflicting application.
I hope that you would find the above interpretation of China’s current conflicting-application system and proposed countermeasures to be informative and helpful.
