As is known, being novel is one of the requirements for an invention to which a patent can be granted. According to relevant provisions of the Patent Law of China, novelty means that, the invention or utility model does not form part of the prior art; nor has any entity or individual filed previously before the date of filing an application relating to the identical invention or utility model disclosed in patent application documents published or patent documents announced after the said date of filing.

The first half of the definition of novelty tells us that to be novel, an invention shall not be a prior art first. “Prior art” means any technology known to the public before the date of filing a patent application for the invention in China and abroad, and shall be determined according to the following standards:

1) the technology is disclosed prior to the filing date/priority date (not including the filing date/priority date) of the patent application;

2) the technology is disclosed by publications, by use and by other means. Means of disclosure by publications here include but are not limited to patent documents, books, academic journals, theses, professional literatures, technical manuals, sample texts, specifications, product catalogues, and officially published proceedings or technical reports etc.; means of disclosure by use here include but are not limited to using, selling, exhibiting, importing, exchanging, presenting, demonstrating; and other means of disclosure mainly refer to oral disclosure, including but not limited to talking, broadcasting, and televising etc.

3) the technology is available to the public, i.e. it can be available to a person, who does not have a duty of confidentiality, when the person would like to obtain it via legal and legitimate means.

The second half of the definition of novelty explains what a “conflicting application” is, and further specifies that “conflicting application” can destroy novelty. Since it is not possible to know whether there is a conflicting application(s) at the time of filing a patent application, there will be certain space to defend during subsequent infringement litigation process. Then, how “conflicting application” is defined and how conflicting application defense is examined becomes the focus of public attention.

Let us find out the current examination standard through the following retrial case of the Supreme People’s Court.

Brief of the case

The patent involved is about an invention regarding a mop, its chassis and a spin-dry tub. Through ingenious design, a rotation speed which is different from the rotation speed of the spin-drying is set for washing, so as to improve the effectiveness of the product. The patentee (hereinafter referred to as “A”) sued the owner (hereinafter referred to as “B”) of the product for infringing their utility model patent. The court of second instance made a judgment against B. B was not satisfied with the judgment and therefore applied for a retrial with the Supreme People’s Court.

During the retrial, B found out a utility model patent and thought it shall be a conflicting application to the patent involved, and B also expressed that the patent involved is a combination of the conflicting application and prior arts, and therefore its novelty is destroyed by the conflicting application. Based on the above, B thought manufacturing product of the conflicting application cannot be determined as infringing the patent involved.

There are also other controversial points in this case, which do not concern conflicting application and thus will not be discussed herein.

The major controversial points in relation to conflicting application of this case are:

1) whether the utility model patent B found is a conflicting application to the patent involved; and

2) whether conflicting application defense raised by B is reasonable.

In view of the judgment of the Supreme People’s Court, the utility model patent found by B is a conflicting application to the patent involved on the grounds that a) the filing date of the utility model patent is prior to the filing date of the patent involved; and 2) the utility model patent is published later than the filing date of the patent involved.

It can be seen that as long as the above said two time conditions are satisfied, conflicting application can be determined.

While regarding the examination standards for conflicting application defense, the Supreme People’s Court has more to say:

According to provisions in Article 62 of the Patent Law of China, “in a patent infringement dispute, where the alleged infringer has evidence to prove that the technology or design exploited by it or him forms part of prior art or is prior design, such exploitation does not constitute infringement of patent right.” Rule 14 of the Judicial Interpretation of the Supreme People's Court on Application of Law in Adjudicating Patent Infringement Cases indicates that where all technical features of an technical scheme accused to fall within the protection scope of a patented claim are identical to or have no substantial difference from the corresponding technical features of an existing technical scheme, the court shall determine that the accused technical scheme belongs to prior arts as provided in Article 62 of the Patent Law.”

Based on the above, the Supreme People’s Court thinks the grounds for stipulating conflicting application defense in Article 62 of the Patent Law are that protection scope of a patent shall not cover prior arts, including both the condition that the technical scheme accused is identical to a prior art and the condition that there is no substantial difference between the technical scheme accused and a prior art. Under the two conditions, the technical scheme accused does not possess novelty or does not possess inventiveness in view of prior art and shall not be granted a patent, and naturally shall not be protected by the patent involved. Since conflicting application and prior art both can be used to assess the novelty of the patent involved, if the technical scheme accused is disclosed by the conflicting application, such technical scheme cannot be grant a patent in view of the conflicting application, and accordingly shall not be protected by the patent involved. Therefore, while the accused infringer argues that no infringement shall be determined on the grounds that the technology he/it exploits is a prior art, the People’s Court shall determine whether the conflicting application defense is tenable with reference to provisions in Article 62 of the Patent Law of China and prior art defense stipulated in Rule 14 of the Judicial Interpretation of the Supreme People's Court on Application of Law in Adjudicating Patent Infringement Cases, etc.

It should be noted that conflicting application and prior art are two different concepts having different definitions and natures, and accordingly, the standards for determining conflicting application defense shall be different from those for determining prior art defense.

A prior art not only can be used to evaluate the novelty of a patent, but also can be used in combination with other prior arts or common knowledge to evaluate the inventiveness of a patent, pursuant to provisions in Articles 22(2) and 22(3) of the Patent Law of China.

Pursuant to provisions in Article 22(2) of the Patent Law of China, the conflicting application does not form part of prior arts of the patent involved since it is published after the filing date of the patent involved. Therefore, the conflicting applications shall be compared with the patent involved separately and be used to evaluate ONLY the novelty of the patent involved.

The conflicting application could not be used to evaluate the inventiveness of the patent involved, and could not be combined with any prior art or common knowledge when being used to evaluate the novelty of the patent involved. Therefore, conflicting application defense will be deemed as tenable only under the condition that all technical features of the technical scheme sued for infringement are solely and fully disclosed by the conflicting application and do not possess novelty when compared with the conflicting application.

With respect to this case, after checking, it is found that the technical scheme of the product sued for infringement is not solely or fully disclosed by the conflicting application, and thus possesses novelty compared with the conflicting application. B’s conflicting application defense by combining the conflicting application with common knowledge obviously contradicts the nature of conflicting application. Therefore, after retrial, the conflicting application defense is deemed untenable.

From this case, we summarize the following examination and judgment standards for conflicting application defense for your reference:

1) a patent cannot protect technical schemes which are the same as prior arts or have no substantial difference compared with prior arts;

2) conflicting application can be used to evaluate novelty ONLY, and cannot be used to evaluate inventiveness or be combined with prior arts or common knowledge; and

3) conflicting application defense will be tenable only when all technical features are solely and wholly disclosed by the conflicting application.

In China, although the standard of determining conflicting application is simple, examination on conflicting application defense is relatively stricter. It is designed so as to prevent abuse of regulations, maintain fairness and justice, and ensure the normal order of market.