Identical Invention-Creations in Chinese Patent Applications

For Chinese patent applications, like invention or utility model, “identical invention-creations” mean claims which exist in two or more applications or patents, and have the same extent of patent protection, according to Section 6 of Chapter 3 of Part II of China’s Guidelines for Patent Examination (hereinafter referred to as the Guidelines).

Principles of Determination

Legal Basis

• Article 59.1 of China’s Patent Law stipulates that: “The extent of protection of the patent right for invention or utility model shall be determined by the terms of the claims. The description and appended drawings may be used to interpret the claims.”

• Section 6 of Chapter 3 of Part II of the Guidelines stipulates that: “where the contents of the descriptions of two applications or patents are identical, but the extents of protection of their claims are different, it shall be concluded that the two claimed inventions-creations are not identical. For example, where the same applicant filed two applications the descriptions of which all contain a product and a process to produce the product, if the claims of one application claim the product and the claims of the other claim the process, the inventions-creations claimed in the two applications shall be regarded as different. It shall be noted that, where the extents of protection of the claims of two inventions-creations partially overlap with each other, the inventions-creations shall not be regarded as identical. For example, where the claim of an application includes a technical feature defined by continuous numerical range, if the continuous numerical range is not completely the same as that in the claim of another invention or utility model application or patent, the two applications shall not be regarded as identical invention-creations.”

How to judge

When judging whether two applications are the identical invention-creations, not only independent claims but also dependent claims need to be considered. The protection scope of the dependent claims refers to the protection scope of the chain formed from the independent claim to the dependent claim.

For example, if the independent claim 1 of the patent W and the dependent claim 2 of the patent T have the identical protection scope, the independent claim 1 of the patent W and the dependent claim 2 of the patent T belong to the identical invention-creations.

As another example, if the dependent claim c of the patent M and the dependent claim d of the patent N have the identical protection scope, the dependent claim 2 of the patent M and the dependent claim 4 of the patent M belong to the identical invention-creations.

Examples

The chain formed by the dependent claim 2 of the patent M1 is: independent claim 1 + dependent claim 2, including features A, B, C and D.

The chain formed by the dependent claim 4 of the patent N1 is: independent claim 1 + dependent claim 4, including features A, B, C and D.

It can be seen that the dependent claim 2 of the patent M1 and the dependent claim 4 of the patent N1 belong to the identical invention-creations.

The chain formed by the dependent claim 2 of the patent M2 is: independent claim 1 + dependent claim 2, including features A, B, and E; The chain formed by the dependent claim 3 of the patent M2 is: independent claim 1 + dependent claim 2 + dependent claim 3, including features A, B, C, D and E.

The chain formed by the dependent claim 4 of the patent N2 is: independent claim 1 + dependent claim 4, including features A, B, C and D.

It can be seen that the independent claims and dependent claims of patent M1 do not belong to the identical invention-creations as the independent claims and dependent claims of patent N2.

The identical inventiveness is more aimed at the claims of the two applications (patents), rather than the whole of the two applications (patents). For example, since the dependent claim 4 of application M and the dependent claim 4 of application N have the identical protection scope, but the dependent claim 5 of the dependent claim 4 in the application M and the dependent claim 6 of the dependent claim 5 in the application N include different features, the dependent claim 4 of the application M and the dependent claim 5 of the application N have different protection scopes. At this time, it is not accurate to describe the relationship between the two applications with the identical invention-creations.

Handling of Identical Invention-Creations during Examination

Article 9 of China’s Patent Law stipulates that: “Only one patent right shall be granted for the identical invention-creations. Where two or more applicants have separately filed patent applications for an identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.”

Therefore, in order to avoid double patenting, it is necessary to judge whether the patent application and other patent applications belong to the identical invention-creations during the examination.

During the substantive examination, according to the provisions of Chapter 3 of Part II of the Guidelines, the case in which this patent application and other patent applications belong to the identical invention-creations can be divided into the following categories.

1. Chinese Patent Applications Filed on the Same Day by the Same Applicant 

During examination, it is found that the same applicant has filed two patent applications for an identical invention-creation on the same day (the date of filing, or the priority date where priority is claimed), and these two applications have met all the other conditions for patentability, the examiner shall notify the applicant of making a choice or amendments with respect to the two applications respectively.

If the applicant fails to make any response within the specified time limit, the corresponding application shall be deemed to have been withdrawn. If the applications are still not in conformity with Article 9.1 after the applicant has made observations or amendments, both of the applications shall be rejected.

For example, the same applicant has filed two patent applications A and B on the same day. During the examination process, if the examiner believes that applications A and B belong to the identical invention-creations, and meet all the other conditions for patentability, the applicant can choose to apply for A or B, so that one of the patent applications can be granted. The applicant can also amend one of the patent applications, such as amending the claims of B, so that B and A do not belong to the identical invention-creations. Otherwise, both applications will be rejected.

2. Chinese Patent Applications Filed on the Same Day by Different Applicants

During examination, it is found that different applicants have separately filed a patent application for an identical invention-creation on the same day (the date of filing, or the priority date where priority is claimed), and these applications have met all the other conditions for patentability, the examiner shall notify, in accordance with the provisions on avoiding double patenting, the applicants to carry on negotiations among themselves to decide who shall be the applicant.

If an applicant fails to make any response within the specified time limit, the corresponding application shall be deemed to have been withdrawn. If no agreement is made after the negotiation, or, after the applicants have made their observations or amendments, the applications are still not in conformity with Article 9.1, all of the applications shall be rejected.

For example, applicant A and applicant B have filed application A and application B respectively on the same day. If the application A and the application B are considered by the examiner to be the identical invention-creations, the two applicants may negotiate to retain one applicant and one patent application, or make amendments or statements so that application A and application B do not belong to the identical invention-creations. Otherwise, both applications will be rejected.

3. “Two Applications Filing for One Case” of Chinese Patent Applications

“Two applications filing for one case” refers to applying for both patent for utility model and patent for invention on the same day for a product technology.

For two applications filing for one case, if the claims in the patent application for invention and utility model belong to the identical invention-creations, the applicant needs to make a choice. Details are as follows.

Section 6 of Chapter 3 of Part II of the Guidelines stipulates that: “where an applicant files on the same day (means the date of filing) applications for both patent for utility model and patent for invention relating to the identical invention-creation, if the patent for utility model has been granted and does not terminate, and the applicant has stated the fact respectively upon filing the applications, double patenting may be avoided by amending the invention application, or alternately by abandoning the patent for utility model. Therefore, during the examination of the invention application mentioned above, if the invention application has met all the other conditions for patentability, the applicant shall be notified to make a choice or make amendments.

Where the applicant chooses to abandon the patent for utility model which has been granted, he shall submit a written declaration to abandon the patent for utility model at the time of making response to the Office Action. In this case, the examiner shall issue Notification to Grant Patent Right regarding the invention application which has met all the conditions for patentability but has not been granted yet, and transfer the written declaration of abandoning the patent for utility model mentioned above to the relevant examination departments for registration and announcement by the Patent Office. In the announcement, it shall be indicated that the patent right for utility model mentioned above ceases from the date of the announcement of grant of the patent for invention.”

It can be seen that if both invention and utility model patents have the prospect of patentability, the applicant chooses one of the patent rights and abandons the other one; The applicant can also amend the claims of the invention, so that it belongs to a different invention-creation than the claims of the utility model, and strive for the patentability of the invention without affecting the patentability of the utility model.

4. International Application Entering the Chinese National Phase

Section 3 of Chapter 1 of Part III of China’s Guidelines for Patent Examination stipulates that: “when an international application designating China is under the procession of formalities of entering national phase, it shall be indicated with either “patent for invention” or “patent for utility model” for kind of protection, which means the applicant can only choose one from the two. In this respect, it is not permitted to request “patent for invention” and “patent for utility model” at the same time.”

It can be seen that, when an international application enters the Chinese national phase, ” Two applications filing for one case ” cannot be carried out, and only one of the two can be selected. “Two applications filing for one case” is merely for Chinese patent applications.

When does an applicant need to consider whether to be the identical invention-creations

Original application and divisional application

For requirements to be met by a divisional application, Section 3 of Chapter 6 of Part II of the Guidelines stipulates that: “The claims of the parent application after division and the divisional application shall claim protection of different inventions respectively. However, their descriptions may have variations.”

If a divisional application is filed based on an original application, the claims of the divisional application (including independent claims and dependent claims) and the claims in the parent application (including independent claims and dependent claims) need to belong to different inventions-creations.

How to avoid it when the applicant files a divisional application

Compared with the granted claims in the original application, the protection scope of the claims of the divisional application should be adjusted. For example, some features are deleted from the granted claims of the original application as the claims of the divisional application; some features are added to the granted claims of the original application as the claims of the divisional application; or a combination thereof. However, it should be pointed out that, no matter how to adjust, it is necessary to avoid that the claims of divisional application and the submitted claim, the amended claims during the intermediate examination, and the granted claims belong to the identical invention-creations.

Regarding the “the submitted claim, the amended claims during the intermediate examination,” it is mainly considered from the perspective of the principle of economy in the patent examination system, so as to avoid the examiner from directly giving a decision to reject the divisional application. The principle of saving is not to examine the identical content repeatedly.

The claims of the divisional application and the claims of the original application protect different technical directions. For example, what is to be protected in the original application is the engine structure of the automobile, and the divisional protection is the structure of the entire automobile.

It is important to note that no matter what method is used to file a divisional application, the content of the divisional application shall not exceed the scope of the original application, that is, the content of the divisional application needs to be supported by the descriptions of the original application.