Abstract:：

This article will give a detailed explanation on how to apply the relevant provisions regarding conflicting applications and partial priority during a reply to the Office Action by examining a sample case. 

During the substantial examination process, the examiner will search to find whether a conflicting application exists, namely whether there is any unit or individual which filed an application to the Patent Administrative Department of the State Council for the same invention or utility model prior to the filing date or whether the same invention or utility model is recorded in the published patent applications or patent publication documents after the filing date. The conflicting application can be used to evaluate the novelty of the invention instead of inventiveness.

If the examiner finds a conflicting application and uses such to evaluate the novelty of the invention, how can the applicant respond?

Firstly the applicant shall confirm whether or not the filing date (priority date if applicable) of the conflicting application is before the filing date (priority date if applicable) of his or its invention. Secondly the applicant shall confirm whether the conflicting application might damage the novelty of his or its invention, namely whether the full contents of the conflicting application disclose the technical solution of the evaluated claims.

Generally the patent attorney will focus on the second step, but may not carefully follow through with the first step. 

For example, in a certain Office Action, the examiner found a comparison document 1 and indicated that the priority date of the comparison document 1 was September 29, 2003, which was earlier than the filing date of January 9, 2004 of the examined application, and held that the comparison document 1 had disclosed the technical solution of claim 1 of the application. So the examiner held that the comparison document 1 constituted a “conflicting application” with claim 1 of the examined application and the technical solution requested to be protected by claim 1 lacked novelty. 

The patent attorney reached the same conclusion as the examiner after comparing the priority date of the comparison document 1 and the examined invention and comparing the technical solutions of comparison document 1 with claim 1 of the examined invention.

However, upon the reminder of the applicant, the patent attorney further checked whether the comparison document 1 could enjoy priority. The result revealed that the comparison document 1 included not only the content included in the prior application, but also some content not included in the prior application. Specifically the comparison document 1 had 14 drawings while the prior application only had 7 drawings. The drawings 5-11 of the comparison document 1 (which were used by the examiner to evaluate the novelty of claim 1) were not included in the foresaid previous application.

According to Chapter 3, Part II, of the Patent Examination Guidelines, an application for the right of foreign priority may contain one or more new technical solutions in addition to the technical solutions described in the original foreign application as the basis for the right of foreign priority. For example, when an application is filed in China subsequent to a foreign application, a new technical solution which further improves or perfects the solution of the foreign application can be included, such as by adding in the description a dependent claim which reflects a new embodiment or example, or by adding an independent claim meeting the requirements of unity. Under such circumstance, the examiner shall not deny the right of priority or reject the application solely on the ground that the technical solution added in the claims of the subsequent application filed in China was not described in the original foreign application; rather, the examiner shall acknowledge the right of priority for the invention-creation in the same subject matter as the first foreign application, taking the filing date of the first foreign application (i.e., the priority date) as the filing date, and taking the filing date of the subsequent application filed in China as the filing date for other inventions-creations. Because some of the technical solutions of the subsequent application filed in China are entitled to the right of foreign priority, this process is called foreign partial priority.

In accordance with the above provisions, only some of contents of the comparison document 1 are entitled to the right of priority; in this case, the drawings and corresponding technical solutions which were compared with the relevant examined application were not entitled to priority. So the filing date of this comparison document should have been the Chinese filing date, namely September 29, 2004, which is earlier than the filing date (December 20, 2004) but later than the priority date (January 9, 2004) of the examined invention.  So those drawings and corresponding technical solutions in the comparison document 1 could not be used to deny the novelty of this invention. Therefore, claim 1 of this invention possessed novelty compared with the comparison document 1. 

Of course we need a pre-condition to reach the above-mentioned conclusion, namely the priority claimed by this application must be valid. In other words, the examined application should be entitled to the priority date of September 29, 2004. Otherwise the filing date of this application is still after the priority date of comparison document 1, and the comparison document 1 can still damage the novelty of this application.

The lesson from this case is that when the comparison document is a conflicting application, we shall not only judge whether the comparison document can disclose the technical solution of the application, but also check the priority date of the conflicting application to confirm whether the comparison document is suitable to be compared to the relevant application.

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