Discussion on Verification of Right of Priority in China
date: 2020-03-02 Kangxin Read by:

    In the field of patents, verification of priority is an important process, and sometimes has a decisive impact on the outcome of examination or litigation.

    Points for Verification of Priority in China

    Verification of priority shall satisfy the following "General Principles of Priority Verification" (see “Guidelines for Patent Examination”, 2010 edition, part II, chapter 8, section 4.6.2):

    (1) whether the earlier application, which is used as the basis of the right of priority, involves the same subject matter as that of the later application for which the priority is claimed;

    (2) whether this earlier application is the first application in which the same subject matter is described; and;

    (3) whether the date of filing of the later application is within twelve months from the date of filing of the earlier application.

     

    Specific Cases and Analysis     

    Case 1: Examination Decision of Request for Invalidation (No. 36591), patent number: 201110089122.9, invention title: Electric Unicycle.

    In the case, the invalidation petitioner provided a US provisional application as evidence. The application date of this U.S. provisional application was earlier than the filing date of China's earlier application for which the patent claimed its right of domestic priority, and the technical fields, technical problems solved, technical solutions and expected effects were the same, so the U.S. provisional application was the first application in which the same subject matter was described. Due to the earlier application in China for which the patent claimed its right of domestic priority, it was not the first application in which the same subject matter was described, and therefore the patent could not enjoy the right of domestic priority.

    Please note that the patentee argued with Article 29 (2) of China's Patent Law: "Where, within twelve months from the date on which any applicant first filed in China an application for a patent for invention or utility model, he or it files with the patent administration department under the State Council an application for a patent for the same subject matter, he or it may enjoy a right of priority". The patentee believed that the patent met the requirements of right of domestic priority and should enjoy the right of domestic priority.

    The opinion of the Reexamination and Invalidation Division was that according to the Paris Convention, the prior application as the basis for priority must be a worldwide first application on the same subject. The "right of domestic priority" stipulated in Article 29 (2) of China's Patent Law is an added clause when the Patent Law was amended in 1992. One of the purposes is to make up for the legal gap in which Chinese applicants who have filed a patent application on the same subject again in China cannot claim the right of priority for its first application. If the prior application in China, which is the basis of its domestic priority, is not the first worldwide application for the same subject matter, the subsequent application cannot enjoy the domestic priority.

    In the end, some patent rights were invalidated in the case because there were no priority rights.

    Case 2: Administrative Judgment of Beijing Higher People’s Court (2016) Jingxing End No.5664, patent number: 201310131560.6, invention title: Egg Products, Processing Method thereof, and Device for Processing Egg Products

    Compared to the priority document, in the claims of the patent, the feature “2400 Hertz” is modified to “2400MHZ” and the feature "chicken egg powder" is modified to "egg powder or egg liquid".

    The Beijing Higher People's Court held that: according to common knowledge, microwave frequency units usually use “MHZ” and not “HZ”, and the microwave frequency cannot be “2400HZ”; recording as “2400HZ” is an obvious error, and the correct recording method should be “2400MHZ”, so this is not a problem. However, "egg powder" is not limited to "chicken egg powder", and "egg liquid" is not limited to the liquid form of "chicken egg" (In Chinese, “egg” is a generic term, not only referring to chicken eggs, but also eggs of other animals). Since only the technical solution using chicken egg powder as a raw material was described in the earlier application document, the scope of the raw materials defined in the related claims of this patent was wider than the scope described in the earlier application in terms of egg type and physical form. Accordingly, the technical solution in the claims of this patent was not the same subject matter as the earlier application, and this patent did not enjoy the right of priority according to China's Patent Law.

    Analysis and Suggestions

    Although the priority system is beneficial to applicants, applicants should comply with the above-mentioned "General Principles of Priority Verification" when perfecting their applications in accordance with the priority system. Compared to priority documents, when an applicant makes a decision on a change, the change usually has a significant impact on the applicant's rights. If it is difficult to determine compliance with the rules, the applicant may consider adding modified claims after the original claims. So, even if the modified claims cannot enjoy the right of priority, it will not affect those original claims to continue to enjoy the right of priority and avoid adverse consequences caused by changes.

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