Preventing a patent authorization

Are we able to stop our rivals from obtaining authorization of a patent application that we regard as having substantial defects during the substantive examination, given the fact that the rival companies hane already published their patent applications? A: Yes. The Implementing Regulations of the Patent Law Rule 48 goes, “Any person may, from the date of publication of an application for a patent for invention till the date of announcing the grant of the patent right, submit to the Patent Administration Department under the State Council his observations, with reasons therefore, on the application which is not in conformity with the provisions of the Patent Law.” I suggest your company drafts a copy of public opinions, marking out the specific application number and putting the substantial defects in detail with authentic evidence and reasons, such as comparative documents and relevant reasoning that may effectively destroy the patent’s novelty and originality. This public opinion then should be handed to the Hearing Department of SIPO Patent Bureau so that the substantive examiner would refer to the document and possibly stop the authorization should they approve the opinion.

(Answered by Ye Wandong, Beijing Erhai Intellectual Property Agent)

Citating other documents in the application

Applicants handed patent application A and B to the patent bureau. Application A cited the specification of the patent’s raw materials from Application B, rather than directly recording the formula. Will citation of this kind lead to insufficient publicity of Application A? A: Guidelines for Examination (PartII Chapter 2) 2.2.3 rules that citations shall comply with the following requirements: “For non-patent documents and foreign patent documents, the publication date shall be earlier than the filing date of the application; for Chinese patent documents, the publication date shall be no later than the publication date of the application.” As for this case, if the publication date of Application B is no later than that of Application A, no problem would be there regarding citations in Application A, otherwise Application A would be seen as not having recorded information abstracted from Application B, which may causes insufficient publication. What worth mentioning is that the delay of publication of Application B may still occur out of some rare causes even if the two applications were filed on the same day. To avoid such risk, applicants are better advised to completely record the whole technical programs.

(Answered by Ye Wandong, Beijing Erhai Intellectual Property Agent)

Double-patenting

Two patent applications were filed respectively for utility model and innovation for the same innovation on the same day. The innovation had been authorized a patent of utility model before, which is expired now. According to the Patent Law Article 9, will it possible for the innovation to be granted patent of innovation? A: The modification of Article 9 in the third amendment of the Patent Law aims to prevent the concurrence of two patent rights for one innovation, as well as a double-patenting to an innovation whose patent has expired. However, an exceptional clause for auxiliary conditions remains in the third amendment of the Patent Law Article 9. In case that a same person applying simultaneously for patent of utility model and patent of innovation for a same creation, the authorization of a patent of innovation can only be acquired by abdicating the creation’s existing patent of utility model, which means a patent of utility model unexpired for the creation must exist. This is because it is a custom to apply for the patent of innovation and the patent of utility model for the same creation on the same day. The practice has brought great convenience to the applicants and there is still a huge need for this unique way of application. When it comes to the above-mentioned case, the patent of utility model has already expired, making it impossible to apply for a patent of innovation.

(Answered by Yi Jiling, examinant of the Patent Bureau, SIPO)