Unlike copyright ownership that usually belong to the original author, ownership of patent only generates through application, which is bound to the technology’s public disclosure. The patent application process has lawful procedures in which application documents shall be examined both formally and substantively, thus an issued patent must meet both formal and substantive requirements. Therefore, date of the application, preparation of application documents, and response to the review comments during the patenting process are crucial.
Substantive requirements of patents vary with the type of patent one seeks to obtain. Invention patents should pass substantive review, and though utility models and designs are not subject to substantive review, they may still be rejected at the preliminary review stage because they do not meet substantive conditions. In this article, we will discuss substantive conditions for issuance of the three types of patent in People’s Republic of China.
Substantive Conditions for Issuance of Invention and Utility Model Patents
“Patent Law of the People’s Republic of China” (hereinafter to be referred as “Patent Law”) Article 22 states：An invention or utility model for which a patent is to be granted shall be novel, inventive and practically applicable.
I. Novelty
1.Definition of Novelty
“Patent Law” Article 22 states: Novelty means that the invention or utility model is not an existing technology, and prior to the date of application, no entity or individual has filed an application heretofore with the patent administrative department of the State Council for the identical invention or utility model and recorded it in the patent application documents or patent documents released after the said date of application.
"Existing Technology " refers to the technology known to the public at home and abroad before the date of patent application. Writing, application, public lecturing, etc. may lead to the disclosure of technology and loss of novelty. "Public" does not depend on the number of people. If the technology is disclosed on a small website, despite the website viewership is 0, the disclosure can still be identified as disclosure to the public..
"Patent documents filed before but released after the said date of application" are patent documents whose application date is prior to the new patent application date but published after the new patent application date. If the "patent documents filed before but released after the said date of application" is substantially the same subject matter as the patent application, the document is a "conflicting application" .
2.Evaluation of Novelty
When evaluating novelty of a technology, the principle of "separate comparison" shall be adopted, which means each of the claim is to be compared to one reference document, instead of multiple reference documents, or two technical solutions in one technical document.
Through comparison, if finds that two technologies in comparison are substantively identical in aspects of technical field, technical problems solved, technical means adopted and expected problems to be solved, then the technical document is "existing technology" or "conflict application", which defeats the novelty of the patent application.
II. Inventiveness
1.Definition of Inventiveness
“Patent Law” Article 22 states: Inventiveness means that, as compared with the technology existing before the date of application the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress.
Invention and utility model patents have different requirements for inventiveness. For an invention, inventiveness refers to prominent substantive features and notable improvements over existing technology. For utility models, inventiveness refers to substantive features and progress over prior art.
Novelty requires that there is no substantively identical subject matter in existing technology, while inventiveness requires that there is an improvement over existing technology. If a technology is new but easily accessible to ordinary people in the field, the technology will be identified as not requiring much inventive effort, and should not be protected by ”Patent Law”; in this case, the technology is novel but not inventive, and thus the patent shall not be granted.
2.Evaluation of Inventiveness
When evaluating inventiveness of a technology, three steps are commonly adopted:
First step, the most similar existing technology should be identified.
Second step, the technology under application is to be compared to the most similar existing technology to identify "distinctive technology characteristics".
Last step, reviewers shall evaluate from the perspective of "ordinary technician in the field" to assess whether "distinctive technology characteristics" is apparent.
Unlike "separate comparison principle" adopted in the evaluation of novelty, multiple technical documents can be combined when making inventiveness evaluation. If it is a simple combination of existing technology, it does not meet the requirements of inventiveness.
B.Practical applicability
“Patent Law” Article 22 states: Practical applicability means that the invention or utility model can be made or used and can produce effective results.
Practical applicability means that the invention or utility model can be adopted in the manufacturing practice and produce positive results. There is no point in protecting a technology that turns out to be non-pragmatic. Practical applicability specifically refers to the ability to be reproduced stably through standardization mode in the industry, that is, ordinary technicians in the technical field can stably and repeatedly implement the technical scheme through the technical content described in the manual and achieve the same implementation effect. Designs that defy the laws of nature, such as perpetual motion machines, clearly do not meet these standards.
Substantive Conditions for Issuance of Design Patents
I. Novelty
“Patent Law” Article 23 states: Any design for which a patent is granted shall not be attributed to the existing design, and no entity or individual has, before the date of application, filed an application with the patent administrative department of the State Council on the identical design and recorded it in the patent documents published after the date of application.
The novelty requirement of a design is the same as that of an invention/utility model, which means that it is not an "existing design" and there is no "conflicting application".
“Existing design” refers to a design known to the general public both at home and abroad prior to the date of application.
II. Distinctiveness
“Patent Law” 23 states: Compared with the existing design or combination of the existing design features, the design for which a patent is granted shall have distinctive features.
The substantial conditions for granting designs in Article 23 were revised at the revision of “Patent Law” in 2008. Before revision of the Law, it was only required that the design was not identical or similar to the existing technology. As a result, many people apply for a combination of several existing designs in practice, or directly apply for "conversion". "Repurposing" refers to applying the design of one product to other kinds of products. For example, if cars are made into car models with the same ratio, since cars and car models belong to different and dissimilar fields, cars with the same shape will not affect the novelty of car models.
The Patent Law was revised in 2008 and drew on the European Union's Design Protection Directive, which requires that "novelty" and "unique characteristics" are the primary conditions for designs to be protected. The second paragraph of Article 23 of the “Patent Law” adds that the design is required to be significantly different from existing technology or a combination of existing technology’s design features.
III. Not to Conflict with Lawful Rights Prior to the Aate of Application
“Patent Law” 23 states: The design for which the patent right is granted shall not conflict with the lawful rights already obtained by other person prior to the date of application.
Since the design refers to the aesthetic design of the shape or pattern of the product, it is easy for the applicant to attach the artwork to the product to obtain a design patent. To avoid this, the “Patent Law” requires that designs do not conflict with the prior lawful rights of others. The prior lawful rights here mainly refer to copyright, trademark right, portrait right and so on.
Therefore, while applying for a patent, the technology owner shall evaluate in advance whether the technical features meet substantive conditions. Technology owners shall prepare the application claims in accordance with the standards of substantive conditions to avoid being rejected.
