Can a US provisional application be used as a foreign priority document for a Chinese patent application?

According to patent practice in China, where a foreign priority date of a reference document is before the filing date of the present application, the time of filing in China of the reference document is after the filing date of the present application, and the content recorded in the reference document is the same as the subject matter in its priority document, a technical solution with valid priority in the reference document can be used as a technical solution of a conflicting application to comment on the novelty of the present application.

Then, if the foreign priority is a U.S. provisional application, is the priority valid? Can it be used to comment on the novelty of the present application? The following will now be explained with a case of the request for invalidation of the patent right of a utility model of “Drive voice coil motor of liquid camera lens and lens group thereof”, which is one of the “Top Ten Cases of Patent Reexamination and Invalidation in 2020”. 

The patent number of this patent is 201820385939.8, the application date is March 21, 2018, the date of announcement of granting a patent is October 9, 2018, and the patentee is AIPEIYI DONGGUAN OPTOELECTRONIC TECH CO., LTD.

The petitioner for the invalidation, Huawei Technologies Co., Ltd., submitted reference document 1 (CN109143722A) as a conflicting application, and stated that it undermined the novelty of this patent. Reference document 1 is a Chinese invention patent application with the publication number of CN109143722A, the application date of June 14, 2018, and the publication date of January 04, 2019 and claims the priority of the U.S. Provisional Application (US 62/521,645), and the priority date is June 19, 2017. In addition, the petitioner submitted the English version and the traditional Chinese version of the priority document (US provisional application US 62/521,645) of reference document 1.

Regarding whether a technical solution in reference document 1 can be used as a conflicting application to comment on the novelty of this patent, the opinions of the petitioner, the patentee and the collegiate panel are as follows.

The petitioner stated: the priority date (June 19, 2017) of reference document 1 is before the application date of this patent (March 21, 2018) and the publication date (January 04, 2019) is after the application date of this patent, and thus reference document 1 can be used as a conflict application document; and, the content of the priority document (U.S. Provisional Application US 62/521,645) of reference document 1 discloses the content of reference document 1.

The patentee stated: a solution corresponding to figures 4A to 4C in reference document 1 is not recorded in the priority document of reference document 1 and thus cannot enjoy the priority; and, the priority document is a priority document formed by a US provisional application that is not open to the public and cannot be searched in China, and thus the priority of reference document 1 is invalid and reference document 1 cannot be used as prior art to comment on the novelty of this patent. 

The collegiate panel thinks that (1) a US provisional application can be used as a foreign priority document for a Chinese patent application. The right of priority originates from the Paris Convention. Its purpose is to enable the filing, by a national of a member country, a later application in other member countries for the same subject matter within a certain period of time after he/it files a patent application for his/its invention-creation in his/her/its own country to be considered as being filed on the filing date of the first application in some respects. It is prescribed in Article 29 of the Chinese Patent Law that “Where, within twelve months from the date on which any applicant first filed in a foreign country an application for a patent for invention or utility model, … he or it files in China an application for a patent for the same subject matter, he or it may, in accordance with any agreement concluded between the said foreign country and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority”, i.e., a foreign right of priority. Provisional application is one of the types of patent applications in the U.S. patent system and can be used as a priority document for subsequent non-provisional applications. Both China and the United States are member countries of the "Paris Convention". According to the provisions of the treaty, US applications should be recognized as priority. Therefore, US provisional applications can be used as priority documents for Chinese patent applications. 

(2) According to the determination rules for a right of priority in Article 29 of the Chinese Patent Law, for a technical solution of a patent application that claims a foreign priority, a technical solution recorded in a priority document can enjoy priority, and a technical solution that is not recorded in the priority document does not enjoy priority. Specifically in this case, the petitioner advocates using a technical solution of a camera device corresponding to figures 2A, 2B, 4A-4C, 10A, and 10B in reference document 1 to comment on the novelty of this patent. The technical solution of this part of reference document 1 is substantially consistent with the textual expressions and drawings in the U.S. Provisional Application and the filing date (June 14, 2018) of reference document 1 is within 12 months from the filing date (June 19, 2017) of the U.S. Provisional Application, and there is no evidence to the contrary that the U.S. provisional application is not the first application. Therefore, the technical solution advocated by the petitioner in the novelty comparison can enjoy the foreign priority. 

(3) The filing date of the technical solution of reference document 1 enjoying the foreign priority is the priority date of reference document 1, i.e., June 19, 2017, which is before the filing date of March 21, 2018 of this patent, and the publication date of January 4, 2019 is after the filing date of this patent. Therefore, the technical solution in reference document 1 enjoying the foreign priority advocated by the petitioner can be used as a conflicting application of this patent to comment on the novelty of this patent. 

In summary, in the case of the request for invalidation of the patent right of the utility model, the collegiate panel finally recognized that conditions for the U.S. provisional application as the foreign priority of reference document 1 are met, reference document 1 can be used to comment on the novelty of this patent, and claims 1, 2, 3, and 14 do not possess novelty in view of reference document 1 as prescribed in Article 22, paragraph two of the Chinese Patent Law, and declared the patent right of granted utility model No. 201820385939.8 to be invalid. 

Finally, it is to be emphasized that although a US provisional application is provisional, will not enter the substantive examination and will not be granted a patent right in the end, it is an application manner often used in patent practice, which can establish a priority date for subsequent non-provisional applications in a very flexible and simple way. In addition, it is prescribed in Article 122 b (2) of the U.S. Patent Law (35 U.S.C.) that a provisional application is usually not published, and it is only published when it is used as a priority document and the publication time is 18 months after the earliest priority date of the formal application (the filing date of the provisional application). Generally, published provisional applications can be found on the USPTO website "https://portal.uspto.gov/pair/PublicPair." As a special form of patent application, a US provisional patent application can be used as a foreign priority. We need to pay attention to this point in patent practice.