However, there is a steady growth of teh number of applications from abroad. In the first half of 2019, a total number of applications for patent for invention from abroad was 78,000, with a 8.6% growth, while a total number of applications for trademarks from abroad was 127,000, with a 15.4% growth. “Such a change in the statistical data shows China’s determination to promote teh change from volume to value as well as the international confidence in IP protection in China”, Mr. Hu said.
(From IPR Daily)
II. Premier Li Keqiang: period of patent and trademark examination will be further shortened
Premier Keqiang Li conducted the executive meeting of the State Council on July 17, 2019 for further IP protection as well as the protection of legitimate rights of various market entities. It was noted that, as deployed by the Party Central Committee and the State Council, the IP protection would be further strengthened, so as to optimize business environment, promote scientific and technological innovation, and deepen international cooperation. In recent years, through improving regulations and policies, the administrative enforcement and juridical protection have been strengthened.
As next steps, firstly, the administrative enforcement will be further strengthened so as to protect the legitimate rights of various market entities without any discrimination. Standards for the judgment, inspection and authentication of infringed or counterfeit products will be formulated. Severe punishments will be inflicted on various infringement acts. In addition, rapid, cooperative IP protection will be promoted, and the international cooperation in the IP protection will be strengthened.
Secondly, the amendments to the Patent Law, the Copyright Law, the Trademark Law and the Implementing Regulations of the Patent Law will be promoted, and the illegal cost will be increased remarkably.
Thirdly, the establishment of an intelligent system for patent examination and trademark registration will be accelerated. In this year, a period of the examination of a high-value patent will be shortened to 17.5 months, and an average period of the examination of trademark registration will be shortened to less than 5 months. In addition, the government will focus on the improvement in the IP authorization and registration quality, so as to increase the number of applications for high-value patents and applications for patents in key areas.
(From www.cnr.cn)
III. Shen Changyu: the patent examination and patent authorization will be strictly handled continuously and the IP supervision will be strengthened in the second half of 2019
A Senior Seminar for directors of local IP offices began on July 30, 2019 in Beijing. Shen Changyu, the director of CNIPA, put forward seven measures for the task in the second half of 2019, including continuing to promote high-quality development, strictly handling the patent examination and patent authorization, and continuing to strengthen the IP supervision.
(From Beijing News)
IV. BlueSky action: seven additional measures for the rectification of chaos in patent agency industry
By the end of 2018, the total number of the patent agencies in China amount to 2195, and the total number of the practicing patent attorneys amount to 18,668. However, during the rapid development of the patent agency industry, the industry is confronted with a new challenge due to such phenomenon as “certificate-anchoring”, “unqualified attorney” and “abnormal patent application”.
On August 12, 2019, sources from the CNIPA said that seven additional measures had been put forward in Notification about the acceleration of BlueSky Action for the rectification of chaos in the patent agency industry. The CNIPA would focus on the major problems occurring in the patent agency industry, so as to acquire a great achievement by the end of August.
(From IPR Daily)
V. OPPO acquires more than 500 patents, including USA, EU, China and India, from Ericson
In February, OPPO assigned a global patent licensing agreement with Ericson, including patent licensing and some other projects.
Recently, it is found at www.uspto.gov that OPPO has acquired more than 500 patents from Ericson, including 136 US patents, about 50 IN patents, dozens of CN patents, and some EP patents.
It is found through the Indian patent advanced search system that, OPPO began to hold a patent portfolio in India in 2016, and until now OPPO have 770 published patent applications and 2 authorized patents. Due to a large quantity of backlogged applications and a long waiting time for patent examination in India, it takes a very long time for a patent application to be authorized, but patents may be acquired rapidly in India directly through purchasing.
By the end of July 2019, OPPO has owned more than 37,000 patent applications globally. Apart from Ericson, OPPO has also acquired a large quantity of patents related to LTE and video encoding&decoding technique from Dolby Laboratories, Blackberry, Intel and so on. In addition, OPPO is also proactively addressing patent licensing disputes with some important patentees, so as to reduce the IP risk in the global market.
(From IPR daily)
VI. American senators attempt in vain to restrain Huawei from buying and selling US patents, opposed by several American science-and-technology enterprises
When the American government hesitates to loosen restrictions on Huawei, two American senators proposed a new draft on 18, July for restrain Huawei from buying and selling US patents. The Wall Street Journal quoted a statement made by Andy Purdy, the CSO of Huawei USA, as saying that “this pending draft has damaged a basic right of a patent holder for protecting his own intellectual property”.
It is reported that, this draft was jointly submitted by Marco Rubio, an anti-China Republican senator, and another senator John Cornyn. As suggested in the draft, the American government should be allowed to prohibit any enterprises in a black list from buying and selling US patents, or acquiring exclusive authorization of any US patent. Rubio and Cornyn make no effort to hide the fact that this draft just aims at Huawei. Rubio said in a statement that the United States Congress should stop Huawei from “using ‘patent troll’ means to retaliate against American enterprises as well as any effort made by the Trump’s government for protecting our country and the 5G future”.
(From China IP Magazine)
VII. Counterfeit Huawei phone: the amount of money involved in the case amounts to millions of RMB
A used or broken “Huawei” phone is repaired by a phone maintenance personnel, a membrane is attached onto the phone by a professional personnel, and then the phone is packed into a new cellphone box and plastics-sealed. Through the above three steps, a “new” Huawei phone has been “manufactured”.
Recently, police in Lin’an District of Hangzhou has destroyed a workshop for manufacturing counterfeit Huawei Phones, and seized more than 600 Huawei phones, a large quantity of used mobile phones and more than 5000 parts.
Police said that the counterfeit mobile phones, each with a factory price of 1000 RMB and a selling price of 3000 to 4000 RMB, were sold at online shopping platforms or offline markets, and the criminal gang earned a profit of millions of RMB through the counterfeit Huawei phones.
(From China IP Magazine)
Special Topic and Patent Practice
Discussions on Argumentation about Common Knowledge
I. Introduction
For the patent examination in China, usually a three-step approach is adopted to evaluate inventiveness. In the course of judgment, when a distinguishing feature is considered as the common knowledge in the prior art, it may be determined that there exists a technical motivation in the prior t as to apply said distinguishing features to the closest prior art, so the technical solution to be claimed may be deemed as obvious.
There is currently no specific definition about the common knowledge. In Part II, Chapter 4, Section 3.2.1.1 (i) of the Guidelines for Patent Examination, the common knowledge has been interpreted through examples, i.e., a customary means in the art to solve the redetermined technical problem, or a technical means disclosed in a textbook or reference book to solve the redetermined technical problem. In Part IV, Chapter 2, Section 3.3, evidences for common knowledge, e.g., technical dictionary, technical manual and textbook, have been listed.
In the patent examination practice, one or more distinguishing technical features may be simply considered by many examiners as the common knowledge in the art without providing any evidence, or even without any description, or merely with the evidences having insufficient probative force, or merely with less-convincing description.
This article aims to provide some ideas about the argumentation on the common knowledge during the inventiveness examination.
II. Problem existing in the determination of the common knowledge and countermeasures thereof
Whether an invention or utility model (hereinafter referred to as this application) is inventive is determined by the examiner after understanding the content in this application, so the inventiveness of this application may easily be estimated at a relatively low level. At this time, a function of the distinguishing feature in this application may be ignored. Instead, the examiner may simply consider that the distinguishing feature has been disclosed in evidences, and then take a general function of the distinguishing feature disclosed in the evidences as the function in this application.
In this case, a basic argumentation scheme will be described as follows. As specified in Part II, Chapter 4, Section 3.2.1.1(3) of the Guidelines for Patent Examination, whether the general function of the distinguishing feature in the evidences is the same as the function in this application for solving an existing technical problem may be determined at first, and when the general function is different from the function in this application, there is no such a technical motivation in the prior art as to apply said distinguishing feature to the closest prior art in solving the existing technical problem, so the claimed invention is not obvious.
Analyses will be given as follows in conjunction with two cases.
1. In the case of evidences provided by the examiner, when the evidences belong to a technical field different from this application, usually the general function of the distinguishing feature in the evidences may be different from the function of the distinguishing feature in this application.
Case 1
This application relates to a method for preparing an air-refused stereo packaging material for a self-adhesive film, based on self-adsorption of the self-adhesive film as well as characteristics of a special printing blocking device.
Claim 1 of this application differs from Reference 1 mainly in that an inner surface of a second resin thin film is locally subjected to corona treatment during the printing, and a false heat-sealing layer is formed between a second resin thin film and a third resin thin film during a heat sealing operation, so as to prevent the second resin thin film from being adhered to the third resin thin film.
As asserted by the examiner, the corona treatment on the surface of the resin thin film is common knowledge in the art. In addition, the examiner provides some evidences for proof.
However, these evidences relate to the field of thin film printing, while this application relates to the field gas packaging. In this application, the inner surface of the second resin thin film is locally subjected to the corona treatment, so as to generate an air channel between the second resin thin film and the third resin thin film, thereby to form a heat-sealing blocking device and provide the false heat-sealing layer. However, in the evidences, the resin thin film is subjected to the corona treatment so as to increase an adhesive force for ink. In other words, in different fields, the corona treatment has different functions, and such conditions for the corona treatment as desired electrode gaps and discharge frequency are also different. Hence, said distinguishing feature shall not be considered as the common knowledge in the art.
2. In the case that the distinguishing feature is a conventional technical means in the art, whether the function of the distinguishing feature in this application is the same as the general function of the distinguishing feature or the related technical means in the art may be determined.
Case 2
Claim 1 of this application seeks to protect a method for preparing a flowmeter, including securing a driver onto a fluid pipe device, connecting the fluid pipe device to a pedestal, and connecting a sensor device to the fluid pipe device, characterized in that: the connecting the fluid pipe device to the pedestal includes preparing the fluid pipe device by such a material as perfluoroalkoxy (PFA) or polytetrafluoroethylene (PTFE) so that few ions or no ion has transferred from the material of the fluid pipe device to a processing material; the fluid pipe device is etched so as to form a surface suitable for connecting and securing a flowmeter component; and an inlet end and an outlet end of the fluid pipe device is secured to at least one processing connection member, so as to form an ultra-purity flow passage flowing through the flowmeter.
Claim 1 of this application differs from Reference 1 in the step of etching the fluid pipe device so as to form the surface suitable for connecting and securing the flowmeter element.
As asserted by the examiner, etching is a conventional technical means in the art.
In this application, through the etching, a chemical property of an outer surface of the PFA elements is changed, so that the PFA elements are capable of being connected to a non-PFA elements. During the etching, the PFA elements need to be immersed into a heating groove containing ethoxyethanol, preferably diethylene glycol-sodium dimethyl ether naphthalene, and then slightly stirred for a period of time. Reference 1 fails to give any technical motivation as to etch the fluid pipe device of the flowmeter, so as to connect and secure the flowmeter element in a better manner. Although the etching itself is common knowledge in the art, there is no technical motivation in the prior art to etch the PFA elements prior to the connection of the PFA elements to the non-PFA elements, thereby to connect and secure the flowmeter element. In addition, based on the distinguishing feature, it is able to achieve such a technical effect as facilitating the connection and securing of the PFA element with ultra-purity to the other non-PFA elements. In other words, a function of the etching in this application is not the same as a general function of the etching in the prior art, i.e., the distinguishing feature is not common knowledge in the art.
3. In many cases, the examiner fails to provide any evidences nor detailed description about the common knowledge. Actually, the burden of proof has been disadvantageously transferred to the applicant.
As specified in Part II, Chapter 8, Section 4.10.2.2 of the Guidelines for Patent Examination, “the common knowledge of the art cited in the Office Action by the examiner shall be accurate; where the applicant has objections to the common knowledge cited by the examiner, the examiner shall state the reasons or provide corresponding evidence for proof”. However, the examiner is not restrained thereby.
As is known to all, it is far more difficult to prove a certain technical feature is not common knowledge than to prove the technical feature is the common knowledge, and undoubtedly, the difficulty in the applicant’s argumentation will increase inappropriately. In this case, it is very difficult to achieve a desired purpose by merely requiring the examiner to provide evidences for proof. If possible, it is suggested to provide evidences on the applicant’s own initiatives to set forth a current situation in the art, thereby to show clearly what the real common knowledge in the art is. Based on this, the applicant may argue that the asserted common knowledge is not common knowledge in the art. Of course, the most convincing evidences include the technical dictionary, the technical manual and the textbook specified in the Guidelines for Patent Examination. In addition, several patent literatures in the art and detailed technical specification are usually feasible according to the patent practice.
By the way, in the amendment draft of the Guidelines for Patent Examination (exposure draft), a corresponding paragraph in Part 2, Chapter 8, Section 4.10.2.2 is amended to “the common knowledge of the art cited in the Office Action by the examiner shall be accurate; where the applicant has objections to the common knowledge cited by the examiner, the examiner shall provide corresponding evidence for proof or state the reasons; where a technical feature contributing to the solution to the technical problem is asserted by the examiner in the Office Action as the common knowledge, generally the examiner shall provide evidences for proof”. In other words, the amendment draft, the burden of proof has been clarified when the common knowledge is cited by the examiner, so it is expected that the random assertion of the common knowledge will be prevented to some extent in future.
III. Conclusion
In the course of judging whether a distinguishing feature is the common knowledge or not, it is suggested to follow the method of judging whether a technical solution is obvious or not in the Guidelines for Patent Examination, i.e., place the distinguishing feature in the entire technical solution and determine its function in the application. When a function of the distinguishing feature in the application is different from a general function of the distinguishing feature or the related technical means in the art, or when the evidences provided by the examiner belong to a field different from the application, the distinguishing feature shall not be considered as the common knowledge in the prior art even if the distinguishing feature itself is common. If necessary, the applicant may provide on its own initiative evidences for proof.
（Kong Bo）
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