A recent intellectual property case saw an applicant have to abandon three Chinese invention patent applications. The applications were deemed to lack novelty while his reference documents were published in advance by the applicant. Subsequently, he had no choice but to accept the decision and abandon the patent applications.
While this case cannot be helped, it teaches an important lesson about filing patent applications. An applicant should not disclose patented technology paperwork unceremoniously before filing for a patent, as this contributed to reducing the novelty of the application and ultimately, it’s rejection.
Novelty is one of the three main elements for obtaining a granted patent. Novelty can be defined as uniqueness so that the invention or utility model does not form part of the prior art, nor has any entity or individual filed previously before the date of filing with the Patent Office an application relating to the identical invention or utility model disclosed in patent application documents published or patent documents announced on or after said filing date. That is to say, the conditions for novelty are:
1. No prior art exists
2. No prior patent application exists
So, what does the “prior art” mean? What kind of disclosure belongs to the “prior art”?
Prior art means any technology known to the public before the date of filing in China or abroad. The prior art includes any technology which has been disclosed in publications in China or abroad, or has been publicly used or made known to the public by any other means in China or abroad, before the date of filing (or the priority date where priority is claimed). In other words, prior art is that which is available to the public before the date of filing and shall contain such contents from which the public can obtain substantial technical knowledge. It should be noted that technical contents in the state of secrecy are not part of the prior art.
The disclosure of prior art is exhibited in three ways, and is not limited to territory:
1. Disclosure by publications
Publications in the context of the Patent Law refer to the independent carriers of technical or designing knowledge that disseminate such information. These indicate or show evidence to prove a date of issue or publication.
Publications of the above definition come in various forms including, printed or typed paper documents, such as patent documents, scientific and technological magazines and books, academic theses, specialized documents, textbooks, technical manuals, officially published proceedings or technical reports, newspapers, sample books, product catalogues, and advertisement brochures etc. They can also be audio or video materials made by electric, optic, magnetic, or photographic means, such as microfiches, films, negative films, videotapes, tapes, gramophone records, CD-ROMs, etc. Furthermore, they can be materials in other forms, such as those on the Internet or in other online databases.
Whether a document is deemed a publication shall not be affected by the place or language of issue, the manner of acquisition, or its age. The amount of distribution, whether it has been read, or whether the applicant is aware of it is of no relevance either.
2. Disclosure by use
Means of disclosure by use include making, using, selling, importing, exchanging, presenting, demonstrating or exhibiting the technical content available to the public. Provided the relevant technical content is placed in such a state that the public can know it if they wish, disclosure by use can be established. Thus, it is of no relevance whether the public had actually known it. However, if at an exhibition or demonstration of a product no explanation of the technical contents thereof is provided so that the structure and function or composition of the product is not known to a person skilled in the art, the exhibition or demonstration does not constitute a disclosure by use.
Where disclosure by use is concerned with a product, it can be established even if the product or device used needs to be destroyed to understand the structure and function of said product. Moreover, disclosure by use also includes disclosure on an exhibition stand or in a shop window of informative materials that are readable by the public or directly visible materials, such as posters, drawings, photographs, specimens, and samples.
3. Disclosure by other means
Disclosure by other means mainly refers to oral disclosure of information, including talking, reporting, speaking at a symposium, broadcasting, televising, and cinematographing that make the technical contents known to the public.
Based on the means of disclosure discussed above, there are many areas of misunderstanding. The current common misunderstandings about technology disclosure are as follows:
1. After obtaining new research results, should you publish a paper first or file a patent application first?
A patent file application should be submitted prior to the publishing of a paper. If a paper is published prior to a patent application, the novelty of the said application may be diminished. Subsequently, it has a higher risk of being rejected. This is particularly pertinent because the date of publication of a paper can be hard to control, thus, it is safer to submit a paper after filing a patent application and obtaining an application number.
2. After developing a new product, should you publish the information on the internet?
On the one hand, it will cause others to preemptively file a patent application (prior patent application). However, on the other hand, the patent application filed later may lose its novelty and would be rejected because of premature disclosure of your technology or products.
3. Disclosure in a social circle of friends (such as Moments of WeChat)
For information posted in a small social circle of friends, if it is obvious that the user released a product for the purpose of selling and promoting the product then the friend is not required to keep it confidential. If it is not expressly said or implied that the friend cannot repost it, then the pictures of the product can be understood as public, and free to share from the day they are released in the circle of friends. Therefore, it is important not to disclose your products unceremoniously as this can reduce their novelty and prevent a successful trademark application.
So, will all disclosures cause the loss of novelty of the patent application? No!
The Chinese Patent Law states that an invention/creation for which a patent is applied for does not lose its novelty if, within six months before the date of filing (or the priority date where priority is claimed), one of the following events occurred:
(1) where it was first published for the purpose of public interest when a state of emergency or extraordinary situation occurred in the country; (effective from June 1, 2021)
(2) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government;
(3) where it was first made public at a prescribed academic or technological meeting; or
(4) where it was disclosed by another person without the consent of the applicant.
Wherein, the international exhibitions sponsored by the Chinese Government include those sponsored by the State Council or its departments, or by other institutions or local governments approved by the State Council. The international exhibitions recognized by the Chinese Government refer to the international exhibitions that are registered with or recognized by the International Exhibitions Bureau as stipulated by the International Exhibitions Convention. The international exhibitions refer to those at which exhibits are from foreign countries as well as from the organizing country.
Prescribed academic or technological meetings refer to those 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. Disclosure at a meeting of the latter nature is prejudicial to the novelty of the content, unless there is an agreement on confidentiality concluded at such a meeting.
It is important to note that if, within the grace period, a third person “rediscloses” the same technology in an independent identity after learning of the published technology, it will destroy the novelty of the technology and you are unable to file a patent application. Even a third person can use the information disclosed previously by the inventor to file a patent application in his own name first, thereby creating obstacles to the inventor's subsequent patent application.
In conclusion, it can be seen from the above that most forms of disclosure can destroy the novelty of subsequent patent applications. Even if it meets the conditions of the grace period for non-prejudicial disclosures, the patent application may lack novelty due to the disclosure of others during that period. Therefore, it is necessary to file a patent application first, and then disclose related products and technologies.