4.7.5 Novelty
Article 22 paragraph 2 of the Patent Law stipulates the following:
Novelty means that, the invention or utility model does not form part of the prior art; no entity or individual has filed a patent application for the identical invention or utility model with the patent administration department under the State Council before the filing date and the content of the application is disclosed in patent application documents published or patent documents announced after the filing date.
Determining novelty involves two aspects: first, that the invention or utility model does not “form part of the prior art” and, second, that there is no “conflicting application” – that is, no patent application has been filed for an identical invention or utility model with the patent administration department before the filing date and subsequently recorded in the patent application documents or patent documentations that are published or announced after the filing date. The expression “no entity or individual” in Article 22 paragraph 2 of the Patent Law means that conflicting applications also include prior (i.e., filed before the filing date) patent applications filed by the patent applicant.
4.7.5.1 Prior art
Prior art is a fundamental concept in Patent Law. Its assessment has an important impact on the trial of cases involving patent grant and confirmation. When the Patent Law was amended for the third time in 2008, the concept of “prior art” was added to Article 22 paragraph 5: “Prior art means any technology known to the public domestically and/or abroad before the filing date of patent application.” To improve the quality of patents, the criterion determining prior art was changed to “absolute novelty” – that is, “prior art” referred to technologies known to the public domestically or abroad before the filing date, irrespective of how it was disclosed.
The technical content disclosed in prior art and in conflicting applications includes both the technical content clearly recorded therein and the technical content that can be directly and undoubtedly determined by a person skilled in the relevant field of technology.
Regarding whether the materials filed and recorded as an enterprise’s standards constitute prior art under the Patent Law, in a retrial of an administrative dispute over the invalidation of a utility model patent, Textile Machinery Co. v. Patent Reexamination Board,139 the Supreme People’s Court held that the filing and recording of such materials do not mean that the specific content of the standards has been publicized or made freely accessible and available to the public; therefore, such materials do not constitute prior art under the Patent Law.
In an appeal of an administrative dispute over the invalidation of a design patent, Liu Xiaosheng v. Chaozhou Chaoan Xiangxingfa Electronic Technology Co.,140 the Supreme People’s Court held that, when determining whether information in cyberspace that requires authorization to access (such as found in Qzone and WeChat Moments) constitutes prior design or prior art, a people’s court should make a comprehensive analysis on the main purpose of the cyberspace, the upload time, accessibility of the information and so on and make the judgment based on whether the information was publicly available before the filing date of the patent. If a cyberspace requiring access authorization is primarily for commercial use, then it may be presumed that that cyberspace is accessible to the public unless there is evidence to the contrary.
Regarding the determination of prior art, in an appeal of an administrative dispute over the invalidation of an invention patent, Beijing Baidu Netcom Science and Technology Co. v. China National Intellectual Property Administration,141 the Supreme People’s Court held that “known to the public” means that the public could know the prior art if they want to, rather than that the public actually knows. It also held that, where a party claims prior art by virtue of a physical object, they must clarify the claimed prior technical solution and the corresponding relationship between the object and the solution and produce sufficient evidence to prove or fully explain how the public can intuitively obtain the technical solution from the physical object.
4.7.5.2 Criteria for examining novelty
When determining whether an invention or utility model patent forms part of the prior art or whether there is any conflicting application, the people’s courts consider whether the patented technical solution is substantially the same as any technical solution disclosed in the prior art or in a potentially conflicting application and whether it could be used in the same technical field, solve the same technical problem or have the same expected effect.
The assessment of novelty adopts the principle of separate comparison – that is, separately comparing each of the claims with the relevant technical content disclosed in each item of the prior art or conflicting application rather than comparing a combination of the contents disclosed in multiple items of the prior art or conflicting application or a combination of several technical solutions disclosed in one reference document.
In an appeal of an administrative dispute over the invalidation of an invention patent, Tong Kening v. Zhejiang Shuangyu Industrial Co.,142 the Supreme People’s Court held that, when determining the novelty of an invention patent, the people’s court should adhere to the principle of separate comparison and compare each of the claims with each prior art separately, rather than with the combination of two or more technical solutions disclosed in one or more reference documents.
In an appeal of an administrative dispute over the reexamination of the rejection of an invention patent application, Albemarle Corp. v. China National Intellectual Property Administration,143 the Supreme People’s Court held that, if the prior art has disclosed the compound for which the patent application or the patent seeks protection, then it can be presumed that the application or patent does not have novelty unless the applicant or patentee can provide evidence proving that the compound could not be manufactured before the filing date.
4.7.5.3 Grace period concerning novelty
With respect to the “grace period” concerning novelty, Article 24 of the Patent Law provides the following:
Within six months before the filing date, an invention-creation for which a patent application is filed does not lose its novelty under any of the following circumstances:
- (1) where it was made public for the first time for the public interests when a state of emergency or an extraordinary situation occurred in the country;
- (2) where it was exhibited for the first time at an international exhibition sponsored or recognized by the Chinese Government;
- (3) where it was published for the first time at a prescribed academic or technological conference; [or]
- (4) where its contents are divulged by another person without the consent of the applicant.
In an appeal of an administrative dispute over the invalidation of a design patent, Beijing Qihoo Technology Co. v. China National Intellectual Property Administration,144 the Supreme People’s Court held that, if another person, within six months before the filing date, violates the expressed or implied obligation of confidentiality under social values or business practices, and the patentee or patent applicant claims that the novelty of the invention-creation should not be taken away because of such a violation, then such a claim should be supported by the people’s court.