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This article discusses the legal risks that may exist in the two application scenarios of domestic priority of designs recommended by the CNIPA. ”
来源:IPRdaily中文网(iprdaily.cn)
Author: Han Laibing, Beijing Huaxia Taihe Intellectual Property Agency Co., Ltd
Article 29 of the Patent Law of the People's Republic of China (hereinafter referred to as the "New Patent Law"), which came into effect on 1 June 2021, stipulates that a patent application for the same subject matter filed with the patent administration department of the State Council within six months from the date of the first patent application for a design in China may enjoy the right of priority. The implementation of this provision marks the formal introduction of a national priority system for designs.
On December 11, 2023, Decree No. 769 of the State Council promulgated the Decision of the State Council on Amending the Detailed Rules for the Implementation of the Patent Law of the People's Republic of China, and the newly revised Detailed Rules for the Implementation of the Patent Law of the People's Republic of China (hereinafter referred to as the "New Implementing Rules") will come into force on January 20, 2024.
In order to ensure the implementation of the new Patent Law and the new Implementation Rules at the level of examination practice, the CNIPA promulgated the Guidelines for Patent Examination (2023) at the same time, which will come into force on January 20, 2024.
I. Formulation of the problem
In the context of the imminent implementation of the new Implementation Rules and the Patent Examination Guidelines (2023), the Patent Archives of the State Intellectual Property Office held a public lecture program with the theme of "Legal Guarantee to Promote Innovation, Patent Law Popularization Nationwide" in January 2024, and conducted a series of lectures on the Detailed Rules for the Implementation of the Patent Law and the Patent Examination Guidelines, and on January 17, 2024, the lecturer of the Design Examination Department of the Patent Office gave a lecture entitled "Revision of the Patent Examination Guidelines - Design Part" Lectures on law popularization. [1]
In a public lecture on January 17, 2024, he pointed out that one of the main purposes of the establishment of national priority for designs is to overcome the problem of novelty in improving applications, and listed two application scenarios.
Scenario 1: For example, if the first application is A, and the later product B is made, and B only makes some small changes on the basis of A, if there is no national priority, and B is filed separately later, then A is likely to become B's existing design or a conflicting application, that is, the novelty of B in the later application is problematic. With the national design priority system, it is possible to file a joint application for A and B as similar designs, and at the same time claim the priority of the earlier application A, and at the same time, the novelty problem of the later application B can be overcome.
Scenario 2: For example, if A and B are substantially identical designs, and there is no national priority system, it will violate Article 9 of the Patent Law, and the applicant can only choose to retain one of the rights of A and B. In the case of a national design priority system, it is possible to combine A and B with similar designs, and to claim the priority of both A and B, which is filed first, can overcome the problem of duplicate grants between the two designs.
On January 19, 2024, the policy illustration section of the official website of the State Intellectual Property Office and the WeChat official account released the content on the same day
In the section on the use of national priority rights, the "Illustrated Designs|Overview of the National Priority System for Designs" shows the application scenarios corresponding to the above-mentioned scenarios 1 and 2 in the form of picture examples, as follows:
(*Photo from the website of the State Intellectual Property Office)
Case 1 is essentially consistent with the aforesaid scenario 1, and case 2 is essentially consistent with the aforesaid scenario 2.
For the above-mentioned two application scenarios, the author believes that there are potential legal risks. In the author's opinion, even if the subsequent joint application is granted at the examination stage, some of the designs may still be declared invalid because they do not comply with Article 23, Paragraph 1 of the Patent Law. The specific analysis is described below.
2. The priority of designs in a joint application
According to the second paragraph of Article 31 of the new Patent Law, a design patent application shall be limited to one design. Two or more similar designs for the same product, or two or more designs for a product of the same class and sold or used as a set, may be filed as one application. Section 9 of Chapter 3 of Part 1 of the Patent Examination Guidelines (2023) refers to design patent applications for two or more similar designs and sets of products mentioned in A31.2 as joint applications.
1. The relationship and status of two or more designs in a joint application
In the case of a design in a joint application, it will inevitably include more than two designs, and how to define the priority of more than two designs in the same joint application will become a practical issue. Since the establishment of the priority right and the determination of the priority date have a fundamental impact on the claims of the patent at the examination, invalidation and rights protection stages, before clarifying the priority of more than two designs in a joint application, we will first understand the current provisions on the relationship and status of more than two designs in the same joint application in the examination, invalidation and rights protection stages.
For the relevant provisions on the examination stage of designs in joint applications, please refer to Section 9.3 of Chapter 3 of Part 1 of the Guidelines for Patent Examination (2023): The designs of joint applications shall meet the conditions for granting respectively. It should be noted that, regardless of whether it involves two or more similar designs of the same product or a design patent application for a complete set of products, each design or design of each product shall meet the requirements for grant in addition to the relevant provisions of the above-mentioned joint application; 。
For the relevant provisions on the invalidation stage of designs in joint applications, please refer to the Patent Examination Guidelines (2023) Part 4, Chapter 3, Section 5: For a design patent containing several products with independent use value, if the claimant's reasons for invalidation of the design patent for some of the products are established, but the reason for invalidation of the design patent for the rest of the products is not established, the decision on the request for invalidation shall invalidate the design patent of that part of the product whose grounds for invalidation are established, and maintain the validity of the design patent of the remaining products. For example, in the case of a design patent containing two or more similar designs of the same product, if the claimant invalidates some of the designs and the other designs are not valid, the decision on the request for invalidation shall invalidate the part of the design that is established and maintain the validity of the remaining designs.
For the relevant provisions on the protection stage of the design in the joint application, please refer to Article 15 of the Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases: For a design patent for a complete set of products, if the accused design is identical or similar to one of its designs, the people's court shall determine that the accused design falls within the scope of protection of the patent. and Article 71 of the Guidelines for Determining Patent Infringement (2017) issued by the Beijing High People's Court, which provides that the scope of protection of a patent for similar designs shall be determined separately for each independent design. The basic design and other similar designs can be used as the basis for determining the scope of protection of their respective design patents.
From the above relevant provisions, it can be seen that after the deletion of a part of the design that does not meet the conditions for authorization in the examination stage, the rest of the designs that meet the conditions for authorization can be authorized, and only part of the design can be invalidated in the invalidation stage, and as long as the alleged infringing product is the same or similar to any design in the independent design in the rights protection stage, it constitutes infringement. It is explained that more than two designs in the same joint application are quite independent in the examination, invalidation and rights protection stages, and that any one of the designs can be separately granted, separately filed for invalidation or invalidation, and separately determined the scope of protection to claim infringement.
Based on this, considering that the priority issue also has a fundamental impact on examination, invalidation and rights protection, as well as the independence of multiple designs in a joint application, the priority of each design should be determined separately for two or more designs in the same joint application, including whether the priority right exists, whether the priority right is established, and the priority date is determined. In fact, this involves the situation that there should be partial priority and multiple priority rights in the design, which can also be supported in the Patent Examination Guidelines (2023), which mentions that according to the provisions of Article 35, Paragraph 1 of the Detailed Rules for the Implementation of the Patent Law, one or more priority rights may be claimed in a design patent, and if multiple priority rights are claimed, the priority period of the patent shall be calculated from the earliest priority date. In the case of a design containing several products with independent use value, a design patent may enjoy one or more priority rights if one or more of the product designs have the same subject matter as the corresponding design or designs expressed in the corresponding first application. The above provisions make it clear that a design may have partial priority and multiple priorities.
2. Part of the priority of the design
For example, in case 1 of the figure below, the earlier application is denoted as A1, and the filing date of A1 is A1, and the filing date of the later application is denoted as A2, and the filing date of A2 is A2 (the interval between A2 and A1 is within six months), A2 includes design 1 and design 2, design 1 of A2 is exactly the same as the design of A1, design 2 of A2 adds a pedal structure on the basis of A1's electric vehicle, and A2 claims the national priority of A1 when filing the application.
Since the design 1 of A2 is identical to the design of A1, the priority of design 1 of A2 is established, and the priority date of design 1 of A2 is A1; Case 1 is the case of partial priority of a design.
3. Multiple priority rights of design
For example 2 in the figure below, the earlier application 1 is denoted as B1 and the filing date of B1 is b1, the earlier application 2 is denoted as B2, the filing date of B2 is b2 (b2 is later than b1), and B2 adds a pedal structure on the basis of B1's electric vehicle, and the later application is denoted as B3, and the filing date of B3 is b3 (b3 is later than b2 and the interval between b1 is within six months) , B3 includes design 1 and design 2, design 1 of B3 is identical to the design of B1, design 2 of B3 is identical to the design of B2, and B3 claims the national priority of both B1 and B2 at the time of filing.
Since the design 1 of B3 is identical to that of B1, design 1 of B3 claims that the priority of B1 is established, and the priority date of design 1 of B3 is b1; since the design 2 of B3 is identical to the design of B2, design 2 of B3 claims that the priority of B2 is established, and since the pedal structure of design 2 of B3 does not exist in B1, design 2 of B3 claims that the priority of B1 cannot be established, and the priority date of design 2 of B3 is b2. Case 2 is a case where there are multiple priority rights for designs.
3. Potential legal risks in joint design applications based on national priority
1. Conflict with the relevant provisions of the application
According to the first paragraph of Article 23 of the new Patent Law, a design for which a patent right is granted shall not be an existing design, nor shall any entity or individual have filed an application for the same design with the patent administration department of the State Council before the filing date, and this shall be recorded in the patent documents published after the filing date. Although "novelty" is not explicitly used as a term for a design, in practice, it is generally considered to be a novelty clause for a design.
If any entity or individual has filed an application for the same design with the patent administration department of the State Council before the filing date, and it is recorded in the patent documents published after the filing date, the design patent application filed earlier constitutes a conflicting application of the patent application in question, resulting in the patent application in question not complying with A23.1 and cannot be granted a patent.
It can be seen that in A23.1, there are requirements of "filing first" and "publication later" for potential conflicting applications, and we need to understand which event is used to compare which event is compared with which event is used to determine which one comes first. According to Article 12 of the new Implementing Rules, except for the circumstances provided for in Articles 28 and 42 of the Patent Law, the application date referred to in the Patent Law refers to the priority date if there is a priority right. Therefore, the "filing date" in Article 23.1 of the new Patent Law refers to the "priority date". Therefore, when analysing the temporal conditions for a potentially conflicting application in A23.1, "filing before" should be understood as the filing date of the potentially conflicting design (priority date in the case of priority) before the filing date of the present design (priority date in the case of priority), and "publication later" should be understood as the date of publication of the grant of the potential conflicting design in the present design (or the priority date in the case of priority).
2. Potential conflicting applications in design joint applications with partial priority
In case 1 above, for example, design 1 of A2 applied later has the priority date of A1 and the filing date of a2, while design 2 of the later application A2 does not have a priority date, but only has the filing date of A2. Assuming that the subsequent application for A2 is successfully authorized after review, the authorization announcement date is A3.
The timeline of each event in Case 1 is shown in the following figure.
In Case 1, the priority date of A2 design 1 is before a2 on the filing date a2 of the later application for A2 design 2 (no priority), and the grant publication date of A2 design 1 is a3 after the filing date of A2 design 2 after a2, so design 1 of A2 is a design published earlier than design 2, and design 1 of A2 is a potential conflict of design 2.
If the subsequent application for A2 is successfully granted after examination, if the design 1 of A2 is used as a comparison design (evidence of contradiction) and the design of A2 is requested to be invalidated by the Reexamination and Invalidation Department of the Patent Office of the State Intellectual Property Office on the grounds that it does not comply with A23.1, there is a possibility that the design 2 of A2 will be declared invalid. In the author's opinion, in this case, there are only some minor differences between design 2 and design 1, and the two are substantially identical designs, and there is a high possibility that design 2 of A2 will be declared invalid.
3. Potential conflicting applications in joint applications for multiple priority designs
In case 2 above, for example, the priority date of the later application for B3 design 1 is b1, the priority date of the later application for B3 design 2 is b2, and the filing date of the later application for B3 is b3. Assuming that the subsequent application B3 is successfully authorized after examination, the authorization announcement date is B4.
The timeline of each event in Case 2 is shown in the figure below.
In Case 2, the priority date B1 of the later application for B3 design 1 was before the priority date B2 of the later application for B3 design 2, and the date of the grant of B3 design 1 was b4 after the priority date of B2 of the later application for B3 design 2, so design 1 of the later application B3 was a design with the later publication of the application relative to design 2, and design 1 of the later application B3 was a potential conflicting application of design 2.
If the subsequent application for B3 is successfully granted after examination, if the design 1 of B3 is used as a comparison design (contradicting the evidence of the application) and the application does not comply with A23.1, the application is requested to the Reexamination and Invalidation Department of the Patent Office of the State Intellectual Property Office to declare the design 2 of B3 invalid, and there is a possibility that design 2 of B3 will be declared invalid. In the author's opinion, in this case, there are only some minor differences between design 2 and design 1, and the two are substantially identical designs, and it is very likely that design 2 of B3 will be declared invalid.
IV. Afterword
This article discusses the legal risks that may exist in the two application scenarios of the national priority of the design recommended by the CNIPA. Since June 1, 2021, the introduction of the national priority system for designs under the new Patent Law has come into effect, which will inevitably bring various problems in the initial implementation stage, and it is worth further observation how to determine the potential conflicting applications in a joint application using the national priority system.
Many applicants will make minor changes to the product or launch a number of similar series designs according to the market reaction after filing a domestic design application, and if the subsequent joint application is carried out according to the guidance of the above-mentioned Cases 1 and 2, based on the opinion of this article, this operation will run the risk that one design in their own joint application will be invalidated due to another design in the same joint application in the future. This article deliberately writes a separate article on this viewpoint, which is also based on the fact that once the above-mentioned Cases 1 and 2 are popularized, there will be no shortage of supporters among the applicants, so it is important to emphasize the importance of discussing the potential conflicting applications in this mode of operation, especially when the new rules are beginning to emerge, we should question and discuss the relevant claims in all aspects in the spirit of "everything is worth questioning", and not let go of any factors that may affect the interests of the applicants.
Exegesis:
[1] (The lecture will be played back at https://cnipa.chinakenet.com/#/lesson/detail/index?id=cd3c0d30f58bc4dfb3ceb07f9ed02006).
(Original title: Analysis of the potential legal risks of the application scenario of the national priority part of the design advocated by the Patent Office)
来源:IPRdaily中文网(iprdaily.cn)
Author: Han Laibing, Beijing Huaxia Taihe Intellectual Property Agency Co., Ltd
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