I. Foreword

Article 9(1) of the third Revision of Patent Law provides, “For the same subject matter of an invention, only a single patent may be issued; notwithstanding, an invention patent may be issued where the same applicant has filed applications on the same day both for utility model patent and invention patent, on the condition that the first obtained utility model patent has not expired, and that the applicant has declared abandonment of said utility model patent.”

First, the new patent law follows the doctrinal principles prohibiting double patenting (double patenting doctrine, or the doctrine); secondly, it allows exceptions to it (the exceptions), namely, providing specific regulations for any case when the same applicant files on the same date applications for the same subject matter both for invention patent and for utility design patent: before the first obtained utility model patent is terminated, and the applicant has made a statement at filing as to filing for both, he shall be entitled to an option to choose. By summarizing and discussing of the above, this article intends to provide comprehensive understanding of the doctrine from various approaches, and tries to offer some advice on the solution of the problems by incorporating a particular example of a statement from the perspective of applicant.

Wang Yigang

II. Some thoughts on the exception

1. Equity and fairness basis

Article 119 of The Implementing Regulations under the Patent Law provide for exceptions in a variety of situations. Some applicants argue, by analogy, that this provision governs when, due to oversight, the applicant fails to make the statement that “an application has been filed on the same date covering the same subject matter for a utility patent” when filing for a design patent, and vice versa. One such applicant, for example made this argument. Anyone may have oversight, or even mistakes, during work. So does it in the patent prosecution. Despite great care and meticulousness, there may be oversight or mistakes on the part of applicant or his agent. For this reason, the Patent Office allows corrections of many kinds. For instance, a sheet of errata may be issued when an applicant’s or inventor’s name is misspelled, or the oversight or conspicuous mistakes found in the paperwork during prosecution may be redressed by way of a certificate of correction or by a statement to this end. Accordingly, it would be procedurally convenient, in the absence of any confusion over material facts, for the applicant to have an opportunity and an option to make such a correction for failing to state at filing, for whatever reason, that “a separate application for the same subject matter has been filed” actually on the same day. By the same token, it would be blatantly unfair, goes the argument, if there is no opportunity to make corrections over the failure to make a “statement on filing for the same subject matter” when the same opportunities are available for other types of mistakes during prosecution.

On this point, the author believes: since bibliographic items include applicant, matters of the inventor, application number, filing date, name of invention-creation, priority issues, classification number, matters of contacts and patent agent, any changes referring to bibliographic items including changes relating to personnel bibliographic items or other items, the changes involving transfer of patent rights or not, the errors occurring during the application or changes required in process of filing share the point that don’t affect the public interest except those of the relevant persons (including the patentee, the assignor and the assignee) nor the rights of the public has not been infringed. However, if the applicant failed to make statement as the provisions of “Exception to No Double Patenting” require when filing application, the infringement from unknowing can’t be avoided only through applicant applied for changes to bibliographic items in accordance with regulations, or the Patent Office takes ex officio actions. From this point of view, requirements on applicant to make a statement while filing application for patent rights by the provisions of Exception to No Double Patenting ensure the principle of fairness be fairly completed, instead of making it lost.

Loss of rights to choose by the applicant’s failure to make statements is not punishment to the applicant. In the present case, it would still have been possible to obtain invention patent rights if only modification had been made to the application, which means the applicant does not necessarily lose the opportunity to be granted the invention patent. The ultimate loss of the rights to choose in this case was the result of absence of applicants’ statement, with which exists the relationships of cause and effect. At the infancy of the Patent Law, the practice was different as it is now for the case at hand. The original intention of adding the provision of “exceptions to No Double Patenting” is not to reduce the workload of examiners as even the applicant respectively makes a statement in patent application, the possibility of double patenting with other applications or patents can’t be necessarily precluded, which means the examiner still needs to do search for avoiding double patenting. Therefore, the applicant enjoys both rights to give up and to amend. In this case, the applicant's rights to amend were not affected by waiving the rights to give up. As the Patent Law regulates patent right application rather than the applicant, it is impossible to limit applicant’s personal rights, not to mention to sacrifice rights of the applicant for convenience of examination or reduction of examiners’ workload.

2. Legal environment

With the rapid economic development in China, laws in variety are also experiencing continuous improvement in order to promote social justice and economic development, which is no exception to the Patent Law. Indeed there still exists room for improvement of China’s overall legal environment, such defect should not be taken as the excuse to the weakening executive ability. However, some applicants exactly take this advantage as the reasons for leniency.

On this point, the author believes: the legal environment of patent system in China is st i l l in the process of continuous improvement through three times of revisions to the Patent Law. In order to ensure the implementation of the newly revised patent law and the Patent Law Implementing Rules, a Transitional Measures for the Implementation of the Revised Patent Law and a Transitional Measures for the implementation of the revised Patent Law Implementing Rules were developed in particular, wherein at the transitional stage, corresponding regulations were made to transitional provisions and articles in the Transitional Measures to define the boundaries of each provisions in terms of their applicability to old and new laws. Article 9 of the Patent Law provides provisions concerning change of essential content. In the process of implementing each provision and article of the law, which is the basis and foundation of just law enforcement, law enforcement officers can’t have two different standards but take law as the criterion. However, the regulation that allows both electronic applications and paper applications to be accepted was established only for the convenience of the applicant but not a legal standard, which means it essentially differs from the implementation of the provisions and articles of the law. In short, law enforcement does not only needs strictness and consensus but also diversity in service. As to doubt to the version of the Application Letter for Invention Patent Right, there was an agent in this case situation, who is obliged to correctly complete the application practice in substitute of the applicant, including stating that “the identical invention-creation has not been applied for another patent right on the same day” as the Acceptance Department of Patent Office does not have the obligation to make such a search.

3. Legislative purpose

Some applicants believe that the intention of safeguarding the interests of applicants by establishing the principle of No Double Patenting might be offset by adding exception clause, which might lead to adversely affection to the interests of the applicant. Although such affection is the result of the applicant’s negligence, it is not consistent with China’s legislative purpose.

On this point, the author believes that the legislature, in making a law, is to take public policy into consideration. It means that the legislative purpose of any law including the Patent Law is to achieve a particular purpose or to solve some problem. It is out of full consideration to the balance of interests between the public and the applicants that the provision of Exceptions to No Double Patenting was added into Article 9 in the third revision of the Patent Law. The newly added provision in Article 9(1) of providing exceptions to No Double Patenting legalized the practice of filing applications for patent rights for both utility model and inventions on the same day for the identical invention-creation in the legal aspects. It is beneficial to the applicants as it allows the applicant to obtain the patent right for utility model without substantive examination, so as to be authorized as soon as possible to and get timely access to patent protection, as well as to be granted the patent rights for invention with a higher legal stability and the advantages of patent protection for two decades. The practice allowing any applicant to apply for patent rights of invention and utility model for any identical inventioncreation on the same day, and can protect the lawful rights and interests of the patentee through effectively avoiding the power vacuum, which helps to stimulate the enthusiasm of the applicant for invention and creation, to encourage inventors to improve their ability to innovate, while also do goods to safeguard the public rights to be aware of information related to the patent application in a timely manner in order to take the initiative to avoid to be alleged infringement caused by unawareness. It balances interests between the public and the applicant, and to promote scientific and technological progress as well as economic and social development in line with the legislative purpose of the Patent Law.

Although the Patent Law encourages inventions and allows any applicant to apply for invention patent and utility model patent of the same subject matter on the same day, there are two conditions to be met for applicants to be entitled to the right to choose (including and only including rights to amendment the application for invention patent and rights to abandon the utility model patent) under the provision of exceptions to No Double Patenting: first, the issued utility model patent has not been terminated; second, the applicant makes a statement at the time of filing applications. For applicant, to make a statement is obliged and the pre-condition to enjoy the rights to choose. If any applicant fails to make the statement that the identical invention-creation should be applied for patent rights for both utility model and invention on the same day out of negligence or mistakes, i.e. absence of fulfilling their obligations, whether the applicant is subjectively intentional or unintentional, they naturally lose the rights of choosing to abandon the patent right of utility model as rights and obligations shall go peer-to-peer since the fact has established.

Practice of right holders who voluntarily give up their rights and interests is the basic embodiment of the personal freedom, but the “give up” under the provision of exceptions to No Double Patenting is the practice for obtaining another right. In essence, it is the process to transfer rights into obligation, namely, abandoning the patent right of utility model means to perform obligations to obtain the patent right of invention. This issue should be understood from two aspects: first, as the applicant in this case stated, in order to adapt to the technological and economic development in China, applicant/patentee’s right to choose shall be respected in judicial practice. When the obtained patent right of utility model has not been terminated, the Patent Office is expected to grant patent right of invention as long as the applicant states to abandon the specific patent right of utility model patent; second, the patent of invention, the “to give up” not aiming to obtain patent right of invention is limited to the scope of rights, not involving any obligation of the rights of people. But if any applicant does not declare absence of purpose to obtain patent right of invention, he will be well-intentioned thought to have such intention, which is not only the embodiment of law theory but also in line with the spirit of democratic legislative and scientific legislation. To the second point, in the aspect of examination practice, it is feasible in law procedure but irrational in practice that people must withdraw patent application for invention patent right in order to implement his/her rights of abandoning patent right of utility model when he/she fails to make specific statement while intending to apply for patent right of both invention and utility model for any identical invention-creation on the same day. Thus, while allowing the applicant to abandon the patent right of utility model is the traditional rights, the “give up” under provisions of exceptions to No Double Patenting is conditional, and the waive in this manner aims to obtain a longer and more stable said the abandonment of the patent right for invention. As the applicant in this case stated, it is the product of specific economic and social development, as well as the embodiment of respecting the applicant/patentee.

4. Article 9 of the patent law and article 41 of the implementing rules

The applicant believes that the rights provided in existing patent law and implementing rules that the applicant can ultimately obtain the rights to patent right for invention without modifying original application for patent rights for invention are obliged to the applicant in Article 9 of the Patent Law and Article 41 of the Implementing Rules.

On this point, the author believes that there are two facts to be clarified: first, in examination practice, examiners review in accordance with the Patent Law, the Implementing Rules of the Patent Law and relevant provisions of the Guidelines for Examination; second, “any identical invention-creation can be granted one patent right” under provisions of exceptions to No Double Patenting should be interpreted as "exceptions to No Twice Patenting for any identical invention-creation.”

As the two provisions that “Exceptions to No Double Patenting” and “any identical invention-creation can only be granted a patent right,” both of which are provided in Article 9(1) of the Patent Law have no relationships of higher-lever law and lower-level law, so it seems that “any identical invention-creation can only be granted a patent right” can’t be expressed as the provision under “exceptions to No Double Patenting.” However, in fact, this representation is logical based on the facts as follows: Article 9 of the Patent Law is corresponding to Article 41 of the lower-level law Patent Law Implementing Rules, in which Article 41(2) of the Rules provides: in accordance with Article 9(1) of the Patent Law, any identical inventioncreation can’t be granted a patent right in absence of statement. It is namely that regulation that any identical invention-creation can be granted only a patent right provided in Article 9(1) of the Patent Law is the same with that provided in Article 41(2) of the Implementing Rules. Thus, from this respective, the expression of “any identical invention-creation can only be granted a patent right” under the provision of Exceptions to No Double Patenting is rational.

To the first fact above, Article 9 of the Patent Law provides that to any case in line with regulations in exceptions to No Double Patenting, the Patent Office shall grant patent right of inventions. As the higher-level law, Article 9 of the Patent Law, does not limit situations complying with exceptions to No Double Patenting, the examiners should review in accordance with relevant provisions of the lower-level, i.e. law the Implementing Rule. If we review Article 41(2) in the Implementing Rules, it provides that: any identical applicant who applies for patent rights for both invention and utility model on the same day (referring to the filing date), on should state that specific invention-creation has been applied for another patent right; if not, the application will be dealt with in accordance with Article 9(1) of the Patent Law, which provides that any identical invention-creation can only be granted a patent right. It is clearly stated in the provision that any application in absence of the applicant’s specific statement shall be dealt with in accordance with Article 9(1) of the Patent Law. But what do these measures refer to for dealing with the specific case? To the second fact, the analysis is as follows: before establishment of the provision of Exceptions to No Double Patenting, the provisions that “any identical invention-creation can only be granted a patent right” were usually understood in two ways: first, any identical invention-creation can’t be granted a patent right twice; second, any identical invention-creation can’t have two patent rights at the same time. There were lasting controversial between the two understanding from time to time. In order to resolve such controversial, the exceptional case in the provision of Exceptions to No Double Patenting was provided, namely, any identical invention-creation can be granted patent rights twice, but will not lead to two patent rights existing for any identical invention-creation. The necessary condition for meeting requirements in this case is to make statement at time of filing application. If the applicant does not make separate statement to the two patent right applications for any identical invention-creation on the same day, the specific application will be rejected even if no cause for rejection was found in examination on the applications or the applicant also agreed to waive the former patent right for utility model, rather than start from the provision that “for any applicant did not make the separate statement, the application shall be dealt with in accordance with provisions providing that any identical invention-creation can only be granted a patent right as in Article 9(1) of the Patent Law” and recycle to Article 9(1) in the Patent Law, which is not a reciprocating infinite loop.

In addition, the Patent Law respects, supports and protects the applicant’s rights to choose. It is not a simple form for applicant to separately make a statement that the identical invention-creation has been applied for another patent right as the practice in fact that the specific invention-creation has been applied both for patent rights of invention and utility model can’t be the substitute for subjective statement. First, to make statements, as expression of applicant’s subjective intention, is the substantial conditions for the applicant to enjoy exceptions to No Double Patenting; second, the patent rights protection granted to the applicant can be ensured in for 20 years from the date no later than the day of filing application through making separate statements without irrational burden; third, one of the conditions under which the patent right can be granted is that the obtained patent right for utility model has not been terminated. Thus the situation that the applicant is granted patent right of invention when the obtained patent right of utility model has terminated or been waived by the applicant can be avoided, which further helps to ensure the public’s rights to know and protect the public interests from any damage.

Fan Li

III. Conclusions and recommendations

Through the above analysis, conclusions are summed up as follows:

1. In accordance with the regulations that “any identical invention-creation can only be granted one patent right,” any applicant who fails to make the statement that the specific invention-creation has been applied for another patent right at the time of filing application, shall be rejected the application for patent right for invention or noticed to modify this application.

2. Though loss of rights to choose is caused by the negligence of the applicant, it can’t be made up in the form of correction.

3. “Any identical invention-creation can only be granted one patent right" under the provision of “Exceptions to No Double Patenting” should be understood as “exceptions to that any invention-creation can’t be granted patent rights twice.”

The Patent Law balances rights and interests between the applicant and public. Establishment of the provision of “Exception to No Double Patenting” is beneficial for the applicants as it allows the applicant to obtain the patent right for utility model without substantive examination, so as to be authorized as soon as possible and get timely access to patent protection, as well as to be granted the patent rights of invention with a higher legal stability and enjoy the advantages of patent protection for two decades.

The practice that any applicant applies for patent rights of both invention and utility model on the same day can effectively avoid the rights vacuum, which helps to protect the legitimate rights and interests of the patentee.

Therefore, to state that any identical invention-creation has been applied for another patent right by the applicant at the time of filing a patent right application is the pre-condition to be granted the specific patent right. The patent applicant or the agent should be aware of the relevant provisions of the existing patent law to make the appropriate statements.