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Difference in the criteria for determining priority right and novelty Using a judicial case as an example

Meng YU
Chinese patent attorney
Chemistry & Biotechnology Department
Linda Liu & Partners
 
It is common to determine novelty in practice. However, there are only a few cases where there is a need to determine whether the claim to priority right is valid. In the article below, the administrative judgment No. 2543 (2019) of Beijing Supreme People’s Court is analyzed to study the criteria for determining priority right.

I. Case Introduction

The features of the prior application and the application at issue are summarized in the table below.
 
Features contained in the description and claims of the prior application Features of the claims of the application at issue
Using sodium sulfate (or using alumite, alum, aluminum sulfate, etc. to react to produce sodium sulfate) as a precipitating agent to separate potassium oxide from a potassium-containing sodium aluminate solution, wherein a temperature of the sodium aluminate solution needs to be reduced to 20℃-70℃ before sodium sulfate is added or after alumite is added; 2. A method for separating potassium oxide from a potassium-containing sodium aluminate solution according to claim 1, wherein the precipitation process of potassium oxide from the potassium-containing sodium aluminate solution requires a temperature reduced to 20℃-70℃.
after adding sodium sulfate, the concentration of the potassium-containing sodium aluminate solution is between Na2Ok 180g/L-280g/L; 3. A method for separating potassium oxide from a potassium-containing sodium aluminate solution according to claim 1, wherein Na2Ok concentrated is controlled between 180g/L-280g/L during the precipitation process of potassium oxide from the potassium-containing sodium aluminate solution.
The precipitation process of potassium oxide in the solution requires stirring for 120-210 minutes. 4. A method for separating potassium oxide from a potassium-containing sodium aluminate solution according to claim 1, wherein the precipitation process of potassium oxide from the potassium-containing sodium aluminate solution requires stirring for 100-210 minutes.

The petitioner mainly alleged that, the Reexamination Decision determined that claims 2-4 cannot claim the priority right, but on the other hand cited the prior application to reject novelty of claims 2-4, and thus is self-contradictory.
 
Beijing Supreme People’s Court judged that the criteria for assessing novelty and the criteria for verifying priority right are not contradictory, and thus rejected the appeal of the petitioner and upheld the original judgment.
 
II. Relevant Laws and Regulations
 
1. Articles of the Chinese Patent Law and the Guidelines for Patent Examination concerning the criteria for verifying priority right
 
Paragraph 2 of Article 29 of the Chinese Patent Law provides that the premise of claiming priority right is that the earlier application and the later application are “for the same subject matter”.
 
The Guidelines for Patent Examination explains in Section 4.1.2 of Chapter 3, Part IIthat, an invention or utility model for the same subject matter means an invention or utility model of which the technical field, technical problem to be solved, technical solution, and prospective effect are the same.
 
Further, the Guidelines for Patent Examination specifies the principle for determining the same subject matter in Section 4.6.2 of Chapter 8, Part II: verification of whether the subject matter is the same is to determine whether the technical solutions contained in the claims of the later application are clearly described in the documents (the description and claims, not including the abstract) of said earlier application. In addition, it can be interpreted from the articles of the Guidelines for Patent Examination that “clearly described” is not limited to the case where the way of illustration is completely identical, but also includes the case where a person skilled in the art can directly and unambiguously derive the technical solution of the later application from the earlier application.
 
2. Articles of the Chinese Patent Law and the Guidelines for Patent Examination concerning the criteria for determining novelty
 
Paragraph 2 of Article 22 of the Chinese Patent Law specifies that one condition for possessing novelty is “nor has any entity or individual filed previously before the date of filing with the patent administration department under the State Council an application relating to the identical invention or utility model disclosed in patent application documents published or patent documents announced after said date of filing.”
 
The Guidelines for Patent Examination also specifies in Section 3.1 of Chapter 3, Part IIthat identical inventions or utility models means that “their technical fields, technical problems to be solved, technical solutions, and their expected effects are substantially the same”.
 
III. Analysis of the application at issue
 
The petitioner may hold the opinion that: now that the Reexamination Decision determined that the present application cannot claim the priority right of the earlier application, the technical solution of the present application should be different from that of the earlier application; thence, it would be self-contradictory to determine that the technical solution of the present application and that of the earlier application are substantially the same and reject the novelty of the present application based on the technical solution of the earlier application.
 
Apparently, the petitioner confused the criteria “the technical field, technical problem to be solved, technical solution, and prospective effect are the same” for verifying priority right with the criteria “technical fields, technical problems to be solved, technical solutions, and their expected effects are substantially the same” for assessing novelty.
 
The Guidelines for Patent Examination provides the specific criteria for examining novelty in actual practice in Chapter 3, Part II, from the perspective of specific (lower level) term and generic (upper level) term, direct substitution of customary means, and numerical value and numerical range. However, the Guidelines did not illustrate referential circumstances for verifying the claim of priority right.
 
But we can still have a look at the criteria for examining priority right in the following circumstances based on the cited judgment.
 
Claim 2 of the application at issue does not define the process before reducing the temperature (the underlined features in Table 1). Hence, the application at issue, which is the later application, does not define the process before reducing the temperature and contains technical solutions which cannot be directly and unambiguously derived from the earlier application. As the later application is not the same with the earlier application, claim 2 of the application at issue cannot claim the priority right.
 
Similarly, as claims 3 and 4 of the applicant at issue each define a numerical range broader than that disclosed by the earlier application, claims 3 and 4 of the application at issue cannot claim the priority right, either.
 
The above criteria may also be applied in the other circumstances such as specific term and generic term and direct substitution of customary means involved in the verification of priority right. It can be seen that determining whether the entire technical solution of the later application canbe directly and unambiguously derived from the earlier application is a relatively convenient way to determine whether the later application can claim the priority right. It also means that the criteria for verifying the claim to priority right is stricter that the criteria for examining novelty.
 
IV. Suggestions
 
1. If the applicant wants to claim the priority right of an earlier application by a later application, the later application must describe the technical solution of the earlier application in the same way of illustration. Specifically, the same way of illustration means that the technical terms of the later application are those disclosed in the earlier application, without generalization or adding detailed description of technical features only described in a generic manner in the earlier application; the later application defines the same numerical range with the earlier application; and the technical solution of the later application is not obtained by patching up the disclosure of the earlier application, and so on.
 
2. When drafting an earlier application, on the one hand, as many specific embodiments as possible should be provided; on the other hand, a reasonable scope of protection should be concluded based on these embodiments, for example, by generalization using generic concepts, so as to protect the contribution of the applicant to the maximum extent. For example, in the case of the administrative judgment No. 82 (2015) of the Supreme People’s Court, the earlier application discloses the feature “light transmission material” while the later application discloses a corresponding feature of “processing object”. The Court determines that “processing object” is a generic concept for “light transmission material”; as the processing object of the later application is different from the earlier application, the later application cannot claim the priority right of the earlier application.
 
3. In order to broaden the scope of protection based on the earlier application, the applicant may draft the applications in the following manner: firstly, the technical solution of the earlier application should be completely and independently described in the later application; secondly, the technical solution to be supplemented should be described in the later application in form of coordinate technical solution.
 
 (2020)

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