Chinese IP Law Updates
March 7, 2022

Protect Disclosed Patent Tech Solutions

Remedies to Protect a Patent Technical Solutions which were Disclosed Prior to the Official Application

The technical solutions should be novel, and creative to be granted as a patent by law, and any improper disclosure prior to the patent application would bring negative effects to the novelty and creativity of the technical solution, which probably leads to some problems for the inventors and applicants during the activities like patent authorization and infringement disputes. We would go through some actual situations where the technical solutions could be disclosed prior to the application, what kind of concerns might arise, and how to deal with those concerns.

The forms of technical solutions being disclosed before patent application include the inventor, the applicant, or others making technical solutions that have not yet been patented or known to the public by any means, by publications (magazines, books, papers, technical manuals, newspapers, advertising brochures, etc.), use (sales, exhibitions, etc.) or other methods (the radio, television, etc.).

Technical solutions being disclosed prior to the patent application shall bring negative effects to the inventor and the applicant even in various areas from patent authorization, confirmation, and infringement disputes. If this happens before the patent authorization and confirmation, it will cause the patent application to lose its novelty and creativeness, thus the patent might not be granted, or face the possibility of being invalided even after being granted. If this happens when there is an infringement dispute in progress, the infringer could use the existing technology or design to defend itself from any infringement liability, in order to get rid of the risk of any possible patent infringement.

Case Study 1. To promote its new fitness equipment products, Company A exhibited the product at an international exhibition. Company A’s competitor, Company B, also participated in the exhibition and paid special attention to the products of Company A. At the same time, Company B took photos of the products and the booth of company A. One month after the exhibition, Company A submitted the design patent application for the above-mentioned fitness equipment products to the National Intellectual Property Administration and obtained the relative authorization. Company B planned to produce and sell products similar to the ones of Company A and conducted a patent risk search and assessment. During their investigation, it was found that Company A had obtained the patent authorization of the products. Subsequently, Company B filed an invalidation against Company A’s design patent and submitted the exhibition photos to prove that the product design had been disclosed to the public prior to the application date, which should make the application be invalidated. In the end, the design patent of the products of Company A was declared invalid due to its negligence. We would discuss in the next paragraphs the remedy on how to defend a patent from being invalidated in these situations.

Case Study 2. Company C entrusted Company D to produce a type of scooter with a new structure. Company E obtained a discarded scooter from Company D and then took the liberty to manufacture and sell the products after drawing out the design paper. Later, one person F sued Company C, arguing that its manufacturing and selling the scooter products have infringed his patented invention. Company C filed a prior technical defense in the lawsuit, believing that its scooter products belong to prior technology and do not constitute patent infringement. Later, the court found out that Company C had given the product design paper of the scooters to Company D for processing before the patent application date and did not mention any obligation for Company D to keep the technology and relevant documents confidential. The discarded scooter obtained by Company E from Company D also proved that Company D had not taken any confidential measures.

Therefore, it could be determined that before the application date of the patent involved in the case, during the process of company D producing the products, the technical solution carried in the design paper of the scooters involved was already in a state of public knowledge. Furthermore, the design paper was kind of graphic, so any technical expert could work out the technical solution of the design paper simply from the appearance of the products.

In the end, the design paper could be used in the defense of existing technology prior to the patent application. Company C’s existing technology defense stands, and its act of manufacturing and selling the scooters does not constitute patent infringement. In this case, Company C used the design paper for existing technology defense to get rid of the infringement liability because the design draft had not been treated confidential and had been made public before the patent application date. From the perspective of patent applicants, design drafts and papers should be kept strictly confidential before any publication usage, including the standardization of the enterprise’s internal management system and the establishment of a confidentiality clause during entrusted processing.

However, there are some situations where we could find a remedy to avoid losing the novelty, even if the technical solution is disclosed prior to the patent application date. The following conditions could protect the technology from losing the novelty if they happen within the past six months from the application date:

  1. It has been exhibited for the first time at an international exhibition hosted or recognized by the Chinese government.
  2. It has been initially published at the nominated academic conference or technology conference.
  3. Others disclose the technology without prior consent from the applicant.

Such a grace period of maintaining its novelty enables the inventors and applicants with more opportunities for commercial promotion and encourages them to have more exchange and communications to improve the technology. Inventors and applicants should pay attention to the conditions and the time limit, the grace period of which is only 6 months, and submit any evidence to support this claim within 2 months after the lodgment of the application.

In Case Study 1, Company A disclosed its products at the international exhibition prior to the patent application date and submitted a design patent application more than a month later after the exhibition. Such a situation suffices the requirement of the grace period, thus if Company A requests the grace period for maintaining the novelty and supporting with relevant pieces of evidence within two months since the application date, the exhibition would not become a threat to damage the stability of its patent rights.

It is vital for the inventor and applicant to take strict confidential measures to protect the patent technical solution before the application, especially trying not to be disclosed by mistakes or by others in any way, and to review the confidential policy from time to time. If the technical solution is disclosed prior to the patent application date, please try to claim the 6-months grace period if it meets with the special conditions.