1.Exceptional circumstance to the principle of excluding repeated granting of patent rights

The Article 9 of the new Patent Law incorporates the Article 13 of previous Implementing Rules of Patent Law and provisions under the Guidelines for Patent Examination into Article 9.1: A patent right shall be granted only for a single invention-creation. However, where an applicant applies for both a patent right for utility model and a patent right for invention with respect to an invention-creation on the same date, the patent right for utility model previously obtained has not terminated, and the applicant makes a statement to waive the patent right for utility model, a patent right for invention may be granted for the invention-creation. Although such amendment does not influence the actual practice, it gives a clear rule on handling the applications for two kinds of patent right with respect to one invention or creation.

The foresaid handling principle is also called the exceptional circumstance to the principle of excluding repeated granting of patent rights. Namely the applicant is allowed to file for both invention patent and utility model patent for the same invention-creation. The applicant can first get patent protection for utility model patent and then abandon it to get invention patent when the Patent Office grants the invention patent to the invention-creation. This gives the applicant procedural protection to the greatest extent.

It should be noted that the Draft of Amendment to the Implementing Regulations of the Patent Law provides that an applicant who files both invention patent and utility model patent with respect to the same invention on the same day shall give statements respectively; otherwise the Article 9.1 of the new Patent Law can not be applied.

2.Improve the statutory requirements on novelty of patent
According to the current Patent Law, the novelty will be deemed lost if the patented technology is known to the public and used publicly in China. According to this rule, for some technologies not published in China, even it has been published in foreign countries or there are relevant products for sale, such technology can still be granted a patent right in China so long as it is not used publicly in China or no relevant products are sold in China. It will result in a low quality of patent in China; it will not help to encourage innovation and it will frustrate the application of foreign existing technology in China.

The standard of novelty of a patent is amended in the new Patent Law and “novelty” means the fact that an invention or utility model is not attributable to any existing technology. The term "existing technology" as used herein means any technology known to the public within and outside China before the date of application. Namely, any circumstances of “known to the public” or “used in public” will be deemed as loss of novelty. According to the new Patent Law, any unpublished technology which has not been used in China before but has been used in the world has no novelty.

It is necessary to point out that the applicant needs not to submit evidence to prove the novelty therein to SIPO when filing a patent application. According to our experience, it is not very possible that the examiner will examine the public use evidence as it is not easy search such evidence. However the amended article has a big impact on the invalidation of patent. During a patent invalidation case, the applicant is required to provide evidence to prove public use and the requirements on such evidence are very strict, e.g. a series of evidence proving public sales shall be provided. In addition, regarding the evidence proving public use, it is necessary to consider whether such use has actually disclosed the technical solution of the patent, e.g. whether the unit exploiting the patent has any confidential agreement with the patentee or whether there is any default trust or confidentiality obligation between the two. In addition, even some equipments are installed in public area while the public cannot know the internal structure of such equipments via legal means, the technical solution of such machine can not be deemed published. According to the civil law and provisions of guidelines for patent examination, the evidence proving public use sourced in overseas countries are subject to the notarization by foreign notary public and legalization by the Chinese consulate in such country.

Sample case 1: on December 22, 1999, the Patent Reexamination Board of SIPO issued No.1699 Invalidation Decision concerning the termination of novelty of a utility model patent named “gripping head”. The filing date of this patent is Dec 26, 1988.

In the oral trial, the requester admitted that 550 sets of gripping head products in the contract were sold to China Machine Import & Export Co., Ltd, Beijing Branch. Because the screw thread of tailcone bar is in British measurement and can not fit with the domestic machine tool, the product can not be sold in China.

After examination, the panel of patent reexamination board confirmed the following facts related to the export act: the requester has exported a batch of iron gripping head to Korea via China Machine Import & Export Company. Before the filing date of this patent, China Machine Import & Export Company discussed the export of iron gripping head with Korean buyer and then signed a purchase contract with Beijing Machine Tool Factory. According to the contract, the iron gripping head made by Beijing Machine Tool Factory was exported to Korea before the filing date.

The requester emphasized that this batch of product was sold directly to China Machine Import & Export Company so it should belong to the act of public use mentioned in Article 22 of the Patent Law. The panel held that according to the function, the import and export company is an agent for the deal between domestic and foreign clients, not a domestic user. Secondly, China Machine Import & Export Company signed the purchase contract with Beijing Machine Tool Factory after negotiation with the Korean client. So it was only a fact of sales to overseas countries and did not belong to the public use in domestic stipulated in Article 22 of the Patent Law. So this utility model patent has novelty.

In this case, the import & export company ordered the gripping head for sales in Korean client and did not sell in China. So the iron gripping head was not known to the public in China and the import & export company assumed default confidential obligation due to agent function in the deal. So the product can be deemed not publicly used in China. According to the Patent Law, this utility model patent has novelty.

As the iron gripping head was exported to Korea before the filing date and the Korean client did not assume confidential obligation in its country, the product can be deemed known to the Korean public after export. For Chinese public, it belonged to the use in foreign country. According to the new Patent Law, the use in foreign country also belongs to the circumstance of public known. So according to the new Patent Law, this utility model patent has no novelty and will be declared invalid.

3.The new Patent Law specifies the claims shall be used to clearly and briefly define the scope of patent protection
The stipulation on the claims by Article 26.4 of current Patent Law is “state the extent of the patent protection asked for”. The Article 26.4 of the new Patent Law provides the claims shall “clearly and briefly define the scope of patent protection requested.” In the new Patent Law, the term “define” is used to replace the term “state” in current Patent Law. The meaning of “define” is “to specify the scope and degree” while the meaning of “state” is “to explain clearly”. The replacement means the function of claims is to define the scope of protection of the patent, which is the scope expressed by the content recorded in the claims, in another word is a scope determined by the literal meaning of the claims. In judicial practice, the protection scope of patent right is not solely determined by the content of claims. According to the Article 59 of new Patent Law, the scope of protection for the patent right for an invention or utility model shall be subject to the contents of its claims and the description and drawings attached thereto may be used to explain the contents of the claims. It means that in addition to the content of claims, the scope of protection of patent is also subject to the explanation of claims by description and drawings. Therefore the “protection scope” mentioned in Article 59 of the new Patent is a scope based on the content of claims with combination of the one explained by the description and drawings. The “protection scope” is a scope expected to obtain in legal aspect. The replacement of “state” by “define” distinguishes the different meanings between the “scope of patent protection requested” mentioned in Article 26.4 of new Patent Law and the “scope of protection” mentioned in Article 59 of new Patent Law. Namely, the “scope of patent protection requested” mentioned in Article 26.4 refers to the scope expressed by the contents of claims while the “scope of protection” mentioned in Article 59 refers to the scope of protection of patent right.

For example, for a utility model patent, the independent claim is: a kind of magnetic controlling sensor of water meter, wherein the dry reed pipe is positioned above or within the glass of observation window of water meter consisting of body 4, observation window glass 2 and a indicator, characterized in an attaching magnet is set above the dry reed pipe，a shielding cover is set above the attaching magnet and dry reed pipe and two magnets with a N pole and S pole respectively are set in opposite to the diameter location of the indicator of the water meter. According to the Article 26.4 of new Patent Law, the content recorded in the independent claim defines the “scope of patent protection requested”. However, the scope of protection of this utility model patent is not limited to the scope defined by the essential technical features recorded in the above independent claims, but also includes the scope defined by the features equivalent to the essential technical features. For example, if a magnetic controlling sensor of water meter is accused for infringement, while the different feature compared with the utility model patent is just one “magnet” is set on the diameter position of the indicator of the water meter, instead of setting two “magnets” like the utility model patent. After making technical analysis, it is easy to get a conclusion that such change is not substantial change although the number of magnets is different. It belongs to realizing basically same function and achieve basically same effect via basically same technical means. Therefore the accused magnetic controlling sensor of water meter has fallen into the protection defined by the features equivalent to the essential technical features of utility model patent, namely the scope of protection of this patent. Therefore it is obvious that the scope defined by the equivalent technical feature and the scope defined by the essential technical features recorded in the independent claim form the “scope of protection” of patent right mentioned in Article 59 of the New Patent Law.

As the Implementing Rules of Patent Law and Patent Examination Guidelines for the new Patent Law are not published yet, the relevant description in the Patent Examination Guideline 2006 version may be referred to for the meaning of “clearly and briefly”.

The meaning of “clearly” refers to:

(1)the theme requested for protection by the claims shall be definite and the type of theme shall be clear;
(2)the technical features of claims and the relations among those features shall be clear and unclear words and words of different meanings shall not be used;
(3)the scope of patent protection requested by the claims shall be clear;
(4)the reference relation of the claims shall be clear and correct;
(5)the sign of drawings referred in the claims can be used to help the understanding about the technical theme recorded in the claims, but can not be used to limit the scope of protection of the claims.

The meaning of “briefly” refers to:
(1)the claims shall adopt the technical features consisting of the technical solution of the invention or utility model to define its scope of protection and shall not include any other contents except for the technical features.
(2)Each claim shall be brief and all claims forming the patent claims as a whole shall be brief;
(3)The number of claims shall be reasonable;
(4)The claims shall be drafted by referring to the prior claims.

In addition, the new Patent Law adopts the provision of “the claims shall be supported by the description” in Article 20.1 of the Implementing Rules of Patent Law. “The claims shall be supported by the description” means the technical solution requested for protection by each claim shall be the technical solution which can be obtain or summarized by the person skilled in the art from the sufficiently disclosed content of description, and shall not go beyond the scope disclosed by the description.

4.Strengthen the protection of generic resources of China

Article 26.7 of New Patent Law provides that for any invention-creation which is accomplished in reliance of genetic resources, an applicant shall state in patent application documents the direct sources and original sources of such genetic resources; where the applicant is unable to do so, the applicant shall state the reasons therefor. Article 5.2 of the new Patent Law provides that no patent right shall be granted for any invention-creation which is achieved in reliance of genetic resources acquired or utilized in violation of any law or administrative regulations. The two articles can be summarized as “legitimate acquisition + statement of source = share of profit”, namely the legal acquire and statement of the source of the genetic resources by the applicant enables the owner of the genetic resource and the patentee to share the profit.

According to the provision of Convention on Biological Diversity (1992), “genetic resources” means genetic material of actual or potential value, including any materials comprising genetic function unit of plant, animal, microorganism or other source, such as the DNA of animal, plant or microorganism, gene, gene group, cell, organ and relevant information.

After the new Patent Law comes into effective, when the patent agent or application files patent for invention-creation which is accomplished in reliance of genetic resources, he/it shall not only indicate the title of invention or utility model, name of inventor, name of applicant or title and address in the application documents, but stat the direct source and original source of the genetic resources. If the applicant could not state the original source, he/it shall state the reasons.

China is a big country of biological genetic resources having rich genetic resource of animal, plant and human. Therefore the relevant articles are stipulated for the purpose of protecting the state and national interest.

5.Other amendments on literal expression

The definition of “designer” in the current Patent Law is removed in the Article 26.2 of the new Patent Law, and is amended to “A request shall specify the name of an invention or utility model, the name of the inventor concerned, the name or title and address of the applicant concerned, and other matters.” Such kind of expression is more accurate because designer means the main body of the design, and not applicable to the main body of invention or utility model.

The term “ruling” in the Article 47.2 of the current Patent Law is changed to “mediation agreement” in the new Patent Law, namely a decision which declares a patent right invalid shall have no retroactive effect on any judgment or mediation agreement with respect to patent infringements which has been delivered and enforced by a people's court, on any decision concerning the settlement of a dispute over patent infringement which has been implemented or compulsorily enforced, or on any patent license contract or contract for the assignment of patent rights which has been performed prior to such declaration; however, losses brought maliciously to another party by a patent owner shall be compensated. The ruling is related to the procedure and the mediation agreement is related to substantial matter. So mediation agreement is suitable to make regulations on the right and interest between the patentee and relevant parties.

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