Li Mi
Rouse
mli@iprights.com

One major change made to the Chinese Patent Law in the Third Amendment was the expansion of the scope of conflicting applications. Prior to October 1 2009, when the new PRC Patent Law became effective, a ‘conflicting application’ referred to an invention or utility model application filed before the filing date of an identical later application made by ‘another’, and published after the filing date of the later application. In the Third Amendment, ‘another’ was changed to ‘anyone’; with the result that an earlier application filed by the same applicant may also constitute a ‘conflicting application’. In addition, under the new Chinese Patent Law, conflicting applications apply not only to invention and utility model applications, but also to design applications.

Like a prior art document, a conflicting application can serve as a novelty bar to prevent a later application from being granted. However, while a prior art document must be published prior to the filing date of the later application, a conflicting application must be filed before the filing date of the later application, but may be published after that date. Where the later application proceeds to grant before publication of the conflicting application, the granted patent may be invalidated for lack of novelty, on the basis of the conflicting application. Unlike a prior art document, a conflicting application cannot be combined with other documents to demonstrate that the subject matter of the later application is obvious.

To determine whether an application qualifies as a conflicting application, the following elements should be considered.

Disclosure

When the novelty of a later application is being determined, each claim of the later application is compared with each technical solution disclosed in each conflicting application, rather than with a combination of several technical solutions disclosed in one, or more, conflicting applications.

Further, according to the Guidelines for Examination, when determining whether an application is a conflicting application, the entire application (including the specification, claims, and drawings) should be considered. This differs from determining whether two applications would involve double patenting: there, only the claims in the two applications are compared.

Moreover, a conflicting application must be identical with at least one technical solution or one design for which protection is being sought in a later application. Two invention or utility model applications are considered to be identical if the technical field, the technical problem to be solved, and the technical solution are substantially the same. Two design applications are considered to be identical if the designs are the same, or substantially the same.

Applicant

Consistent with the first-to-file policy in China, a conflicting application prevents a second applicant obtaining protection for something disclosed in a conflicting application. However, in the past, an applicant could unfairly prolong the protection term by filing an application, and before its publication, filing a second identical application with different claims. The new Chinese Patent Law stops this practice, as the first application will now be a conflicting application filed by the same applicant.

Filing Date

A conflicting application may be either a Chinese application or a Patent Cooperation Treaty (PCT) application that enters the national phase and publishes in China.

There is, however, no explicit provision, in the context of a conflicting application, as to the filing date of a PCT application that enters the national phase in China, claiming priority on the basis of a foreign application. On the other hand, when a Chinese application claims priority on the basis of a foreign application, the application is deemed to have been filed on the date the foreign application was filed. It is, therefore, likely that, in the context of a conflicting application, a PCT application that enters the national phase in China, claiming priority on the basis of a foreign application, will be deemed to have been filed on the date the foreign application was filed.

Publication

A conflicting application must be published in Chinese. If an application has been filed with the Chinese Patent Office before the filing date of a later application, but withdrawn prior to publication, it cannot be used as a conflicting application to render the later application non-patentable for lack of novelty.

Whether a conflicting application can be employed in a prior art defence in patent infringement proceedings is controversial. While some practitioners advocate the use of a conflicting application in a prior art defence, at least where the application has been published and thus becomes prior art, or in determining novelty in the context of infringement proceedings, others believe that a conflicting application is not prior art as defined in the Patent Law and therefore cannot be used in a prior art defence.

Conclusion

Given the changed definition of a conflicting application in the new Chinese Patent Law, patent applicants should carefully monitor disclosure and timing when filing multiple applications in relation to similar technologies. Care should be taken to make no unnecessary disclosures in such applications, or to ensure that the applications are filed on the same day to avoid any conflicting application problems.