Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
I. Changes to “novelty” in the revised Patent Law (third revision)
The third revision to the Patent Law was adopted on December 17, 2008 containing significant changes to the definition of novelty in Article 22. The details are as follows:
Present:
Novelty means that, before the date of filing, no identical invention or utility model has been publicly disclosed in publications in the country or abroad or has been publicly used or made known to the public by any other means in the country, nor has any other person filed previously with the Patent Administration Department Under the State Council an application which described the identical invention or utility model and was published after the said date of filing.
Revised:
Novelty means that, the invention or utility model shall neither belong to the prior art, nor has any entity or individual filed before the date of filing with the Patent Administration Department Under the State Council an application which describes the identical invention or utility model and was published in patent application documents or disclosed in patent documentsannounced after said date of filing.
The prior art referred to in the Patent Law means any technology known to the public in the country or abroad before the date of filing.
Comparing the revised and present definitions of novelty, we see that a “relative novelty bar” is adopted by the present Patent Law while “absolute novelty bar” is adopted by the revised one. That is, in accordance with the present Chinese Patent Law, an invention will remain novel as long as the techniques have not been publicly disclosed in China and abroad or have not been publicly used in China and products incorporating those techniques have not been sold in China, even if the techniques have been publicly used abroad or products incorporating them have been sold abroad. Whereas, according to the absolute novelty requirement under the revised Patent Law, where the novelty requirement will be satisfied only if an invention-creation has not been known by the public either in China or abroad. This change constitutes a tightening of the standards for obtaining a patent. According to the revised Patent Law, an invention that has been publicly used abroad no longer complies with the novelty requirement of Article 22, so it is much more difficult for an application for an invention to be patented.
It is common for an applicant to publicly disclose his or its invention-creation before filing an application for a patent. In accordance with the present Chinese Patent Law, this disclosure does not affect the novelty of a subsequent patent application filed in China, provided that the disclosure is made outside China. However, once the revised Patent Law is put into force, the novelty of a patent application subsequently filed in China will be impacted even if the invention-creation is disclosed outside China.
In this case, a lot of peoples focus on the exceptions where the above-mentioned disclosure manner does not prejudice the novelty of an invention-creation under the Chinese Patent Law. These exceptions permit the retention of novelty even if the technical solution that embodies an invention-creation is publicly disclosed in a certain condition before the patent application is filed. Thus once an applicant has to disclose his or its invention to the public, it will not foreclose the grant of the patent.
Next, we’ll discuss the exceptions from the novelty bar under the Chinese Patent Law based on what we have learnt about.
II. Exceptions to the Novelty Bar
●Relevant items in the Patent Law:
Article 24 of the Chinese Patent Law provides the following exceptions from the novelty bar:
An invention-creation for which a patent is applied for does not lose its novelty where, within six months before the date of filing, one of the following events occurred:
(1) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government;
(2) where it was first made public at a prescribed academic or technological meeting;
(3) where it was disclosed by any person without the consent of the applicant.
(Note: no amendment is made to this item in the thirdly revised patent law.)
●Interpretation and prerequisites for retaining novelty
1. First exhibited at an international exhibition organized or recognized by the Chinese government
(1) International exhibitions organized by the Chinese government
“International exhibitions organized by the Chinese Government” refers to exhibitions organized by the State Council or its departments, or by other institutions or local governments after approval by the State Council.
The certifying materials of the international exhibition shall be provided by the organizer of the exhibition. Such certification shall indicate the date, venue, and name of the exhibition, as well as the exhibition date, form and contents of the invention-creation with the official seal of the organizer affixed.
The ministries and commissions under the State Council include Ministry of Foreign Affairs, Ministry of National Defense, Ministry of Development and Reform Commission, Ministry of Education, Ministry of Science and Technology, State Ethnic Affairs Commission, Ministry of State Security, Ministry of Supervision, Ministry of Civil Affairs, Ministry of Justice, Ministry of Finance, Ministry of Human Resources and Social Security, Ministry of Railways, Ministry of Transport, Ministry of Land and Resources, Ministry of Housing and Urban-Rural Development, Ministry of Industry and Information Technology, Ministry of Water Resources, Ministry of Culture, Ministry of Environmental Protection, Ministry of Health, Ministry of Agriculture, Ministry of Commerce, National Population and Family Planning Commission, People’s Bank of China, National Audit Office, etc. An international exhibition organized by any one of the above departments is supposed to be within the scope of “international exhibitions organized by the Chinese government” in Article 24.
(2) International exhibitions recognized by the Chinese Government
“International exhibitions recognized by the Chinese Government” refers to those held in foreign countries but recognized by the State Council or its departments.
It is unclear how to determine whether an “international exhibition” is recognized by the State of Council or its ministries and commissions, because there are at present no detailed materials or examples that we can refer to. According to Chinese Patent Office practice, first, the country holding the exhibition shall be a contracting member of the International Bureau of Exhibitions; next, an applicant must submit the exhibition details, such as the main organizer, the date, venue, and name of the exhibition, etc. to the corresponding ministry or commission under the State of Council to be approved (for example, an exhibition of a product of communication filed shall be submitted to the Ministry of Industry and Information Technology to be approved). If it is approved, then the exhibition is determined to be an “international exhibition” recognized by the State of Council or its ministries and commissions.
In addition to satisfying the conditions above, the certifying materials to be submitted with the Patent Office must be affixed with the official seal of the corresponding ministry or commission.
(3) First exhibition
First exhibition means being exhibited for the first time. Where an invention-creation is exhibited more than once, the exhibitions subsequent to the first shall not be taken into consideration in evaluating novelty.
2. First made public at a prescribed academic or technological meeting
(1) Prescribed academic or technological meetings
“Prescribed academic or technological meetings” refer to meetings organized or held by the competent authorities under the State Council or national academic organizations, excluding those held below the provincial level or with the entrustment or in the name of the departments under the State Council or national academic organizations.
Certification of the academic or technical meetings shall be provided by the competent authority under the State Council or national academic organizations organizing the meeting. The certification shall indicate the date, venue and name of the meeting, as well as the publication date, form, and contents of the invention-creation with the official seal of the organizer affixed.
The authorities under the State Council include many departments and organizations, which are not listed in detail here.
(2) First publication
An invention is first published when it is made public for the first time. Where an invention-creation is published more than once, the publications subsequent to the first shall not be taken into consideration in evaluating the novelty. “Publication” includes both oral reports, and written materials.
3. Disclosed by another person without the consent of the applicant
“The disclosure made by any other person without the consent of the applicant” includes both the disclosure of the contents of an invention-creation by another person in contravention of an explicit or implicit confidentiality agreement and disclosure by another person who obtains the information from the inventor or applicant through coercion, fraud or espionage.
In either case, the following three matters shall be noted in judging whether a disclosure meets the conditions of the situation 3:
(1) the contents disclosed must be obtained directly or indirectly from the applicant;
(2) the person who discloses the invention-creation shall not be the applicant but may include the inventor (specific to an invention) and the designer (specific to a utility model or a design);
(3) evidences or reasons are necessary to prove that the contents of an invention-creation is disclosed by another person in contravention of an explicit or implicit confidentiality agreement.
Certification submitted with the SIPO shall indicate the date, manner and contents of the disclosure, which shall be signed or sealed by an attester.
●Fees
No official fee need be paid for retaining novelty by claiming an exception under any of the above-mentioned circumstances 1-2.
●Legal effect
It should be noted that the legal effect of retaining novelty through these exceptions is not equivalent to gaining priority.
The retention of novelty through these exceptions is intended to provide a grace period for filing an application. The exceptions act to prevent prejudice against one’s patent rights due to one’s own actions. These exceptions act to ameliorate inevitable or inadvertent disclosures of the invention to the public. They do not permit a filing date of an application to date back to the exhibition date, publication date or disclosure date. In addition, these exceptions are applicable only in severely restricted circumstances. Therefore, the applicant is advised to apply this item only after due consideration and would be well-advised not disclose an invention-creation or have it disclosed before filing an application for a patent for the invention-creation.
