Homegrown innovation

In China, determining if an invention is developed domestically or abroad is important when granting patent protection. Binglin Li of Chofn IP discusses

China’s Patent Reexamination Board recently heard an invalidation case over a patent covering an electric unicycle.

Before this invalidation request was lodged, eight invalidation requests for the invention had already been filed by different applicants. The related US patent is also currently under litigation at the US District Court for the Western District of Washington.

The hearing before the reexamination board involves invalidation requests filed by three applicants and therefore is drawing attention from many different fields.

Furthermore, there is new grounds for invalidation in the request, namely, that the involved invention does not comply with article 20(1) of the Chinese patent law, which relates to confidentiality examination. Article 20(1) stipulates that applicants should apply for a foreign filing license with China’s State Intellectual Property Office (SIPO) if they wish to file overseas first. Under the article, anyone that intends to apply for a patent in a foreign country for an invention or utility model developed in China must first consult SIPO for a confidentiality examination.

This is the first time this article has been used as grounds for invalidation. There is still much to be discussed in terms of juridical understanding and the application of this article, and the trial and decision of it will have a profound impact.

One of the key problems is how to apply article 20(1) correctly. Namely, how to determine if an invention is developed in China. Although it seems simple at first glance, in practice, applying a law proves to be much more complicated. Generally speaking, one invention can be determined by the following methods: direct proofing, the promise method and the presumption method.

Direct proofing means that evidence shall certify where one invention is developed. Evidence could be any and all materials relating to finishing the invention which are provided by applicants, inventors and patent attorneys. Evidence provided by applicants may include the initial materials of research and development projects, progress reports, meeting materials, materials from experiments, a purchasing list of goods, information on the project team, and more.

Materials provided by inventors include research materials, experiment records, reports made during research and development, work journals and progress reports and meeting minutes. These could also theoretically be provided by applicants.

Materials provided by patent attorneys include technical disclosure documents, communication materials with inventors or applicants, minutes of meetings, intermediate documents of application documents. Once the authenticity of the materials is verified, they are the most powerful materials to certify the development of inventions directly or via evidence chains.

Although direct proofing is the most immediate and most trusted method, civil law systems usually do not adopt the direct proofing method because of the difficulties and the high cost of collecting and certifying the evidences. Normally, the direct proofing method is only employed by common law system countries and is also not used during the application procedure.

Due to the high cost of direct proofing, a practice could be adopted that is similar to one used in many countries: having the inventors make an oath. This proposed promise method, it should be noted, currently is not in use in China, and exists only in theory and as a recommendation. The promise method requires that inventors make a commitment of authenticity of the inventor’s qualification and specify the country where the inventions are developed, quite similar to the authenticity promise of inventors employed by certain countries. An oath of authenticity would require that applicants submit an inventor’s’ oath at the filing of a patent application. The oath could include the following statement: “as the inventor of the application below, I hereby declare that I am the original inventor of the invention to be protected in the application, and I hereby confirm that I will the take any adverse consequences according to the relating law due to any intentional misrepresentations”.

As a promise of authenticity, an oath could still be affirmed in practical judgment without proofing. If there is any contrary evidence that indicates an inventor has made a misrepresentation, applicants and inventors should both be punished. Therefore, the applicants’ or inventors’ oaths on inventions could be considered to be included in the next amendment of the Implementation Regulations or Chinese Patent Examination Guidelines.

The presumption method is also a default method which is employed by most countries in the world. If applicants and inventors are of Chinese citizenship and the applications filed do not claim priority from any foreign countries, then it is, by default, presumed that the related inventions are developed in China. Unless, of course, there is any contrary evidence. In practice, the presumption method is supposed to be adopted to determine the development locations of more than 3 million Chinese applications every year. However, there is not any legal or literal basis for the presumption method, even though it is already employed widely.

Of course, the presumption method can also be used in conjunction with partial evidence. For example, official fees’ reduction and deferral is only applicable for inventions developed by Chinese companies or individuals in China. In this instance, the requests or official statements of fees reduction and deferral in historical documents could prove that the relating inventions are developed in China. Furthermore, there are also confidentiality examinations in other countries similar to article 20 of the Chinese patent law. For example articles 180 to 190 of the US patent law relate to regulations of confidentiality examination. It is specified clearly that a foreign filing license is necessary when an invention developed in the US will be filed abroad and that lacking this license will result in punishment. In this situation, if there is no request and approval documents for a foreign filing license for the related US application, it can be inferred that the invention was developed in China, as no foreign filing license was requested from US Patent and Trademark Office.

How does one prove that an invention was not developed in China? Theoretically, a perfect negativity proof is very difficult or even impossible to achieve.

In terms of the above mentioned patent, the Chinese applicant and inventor filed the Chinese application before the SIPO and did not claim any foreign priorities. If a request for a confidentiality examination for foreign filing had been submitted to SIPO, it would have been almost impossible to prove that the invention was not developed in China during subsequent proceedings.

If any foreign priorities had been claimed, and a foreign filing license from another country could have been produced, then the combination of both would partially prove that one application was developed in the foreign country. An argument with no evidence proving the application was developed in a foreign country, is an unconvincing one. It is difficult to prove perfectly whether or not one invention was developed in China.

On 21 December 2001, the Chinese Supreme Court published “Regulations on Evidence of Civil Procedure”, and the regulation of article 73 is as follows “where both parties concerned produce contradicting evidence to prove or contest a fact but neither has enough evidence to rebut the evidence of the other party, the supreme court shall determine which party’s evidence is clearly stronger than the other by taking the case into consideration, and shall affirm the evidence that is found to be stronger”.

Therefore, it is unnecessary to prove perfectly in terms of civil acts, a claim will probably be supported by courts once the evidence proposed by the party has a high degree of probability.

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