Editor's note: This article was prepared by Charles C. Liu, PhD, JD, Partner, Director of US Practice, Unitalen Attorneys at Law and Jeanne J. Liu. It was originally published in China Intellectual Property, 20:44-51 (2007) and appears here with the authors’ permission. Unitalen, the largest private IP law firm in China (see website), is a partner of ChinaBio® Accelerator. 

We will present the material in four installments, which will appear on a weekly basis. In this section, Dr. Liu presents Chinese patent law background and covers the subjects of “Novelty and Inventiveness” and “Crossover of Invention and Utility Model.” Forthcoming topics include “Design Patents,” “Division Applications,” and “Foreign Filing License and Patent Export Control,” among others.

The Chinese patent system has recently experienced tidal waves of change in its statutes and administrative rules. Innovative industries that expect to obtain patent protection in China will continue to be profoundly touched by these waves of change. To stay on top of the changes, it is necessary to discuss certain issues related to the changes in law that are pertinent to global innovative industries and patent practitioners.

INTRODUCTION

The Chinese Patent Law, since its enactment on March 12, 1984 (effective April 1, 1985) was previously revised on September 4, 1992 (effective January 1, 1993) and on August 25, 2000 (effective July 1, 2001). The draft of the third revision of the Patent Law (“Patent Law (Draft Revision 2006)”) is expected to be finalized in 2008 after the current 2000 version has been effective for eight years.

The draft of the third revision was released for comments on July 31, 2006 by the State Intellectual Property Office (“SIPO”) and was further revised and submitted as a draft for review to the Judicial Committee of the State Council on December 27, 2006. It should be pointed out that the SIPO released its revised administrative guidelines, i.e., the Patent Examination Guidelines (“Examination Guidelines (Revised 2006)”) on July 1, 2006. Also, a revision of the Implementing Rules of the Patent Law (“Patent Rules”) is expected to follow this revision of the Patent Law. Task forces were set up earlier this year to conduct research and to prepare an initial draft for the third revision of the Patent Rules.

In this article, certain issues that are pertinent to foreign businesses and practitioners are summarized. The presentation here is mainly based on the Patent Law (Draft Revision 2006) to provide a general picture of the proposed law changes and also touches upon certain practical issues mentioned in the Examination Guidelines (Revised 2006).

NOVELTY AND INVENTIVENESS

On the novelty of patents, the current Chinese Patent Law adopts blended standards: An absolute standard is applied to publications, i.e., a publication anywhere concerning a relevant invention is deemed as a prior art; whereas a relative standard is applied to other means of disclosure if the art is publicly known or used in such a way that the disclosure constitutes a prior art only if it occurs in China. Based on the Patent Law (Draft Revision 2006), however, the relative novelty standard is likely to be changed into an absolute one so that the boundary limitation attached to the publicly known or used prior art is expected to be removed. Therefore, invention patent applicants should keep an invention from being disclosed by any means anywhere before filing a patent application in China.

For the issue of inventiveness, or non-obviousness of inventions under the US patent system, the name of a legal fictional figure referred to as “a person of ordinary skills in the art” is inserted into the patent law’s legal definition of inventiveness. Based on the Patent Law (Draft Revision 2006), the inventiveness of an invention is defined as being an invention having significant substantive characteristics to “a person of ordinary skill in the art” and constituting a substantial technological advance in the field. The draftsmen of the revision intend to give some guidance to patent practitioners, the patent office and the court on the somewhat confusing issue of inventiveness. It is also worth noting that for design patents, as will be further elaborated upon below, a thin inventiveness requirement is newly adopted in the draft revision of the patent law.

CROSSOVER OF INVENTION AND UTILITY MODEL

For an invention based on physical products, one may file patent applications for both invention and utility model, even though only one patent for either an invention or utility model can ultimately be obtained. The Chinese utility model patents are similar to the German and Japanese utility model patents; however, U.S. and some other foreign entities often overlook the Chinese utility model patents when seeking patent protection in China.

Where an applicant has an issued patent and a pending patent application which are based on the same invention, and the patent application is allowable for issuance based on the Examination Guidelines (Revised 2006), the applicant has two options: Abandon the patent right of the issued patent (for example, a utility model patent), or withdraw the pending patent application (for example, an application for invention patent). If the applicant chooses to abandon the issued patent, however, he must claim to abandon it effectively from the filing date of the issued patent.

The Patent Law (Draft Revision 2006) added a clause to address the above issue, such that if applications for an invention patent and for a utility model patent based on the same invention were filed on the same day by the same applicant, the applicant may take advantage of the crossover of the invention and utility model applications.

It should be noted that an applicant might take advantage of the crossover of the applications for an invention patent and utility model patent when filing the applications in China through the Paris Convention, but that at the national entry into China for a PCT application, the applicant has to select either invention or utility model, but not both.

 To be continued...

Disclosure: none.