According to the Chinese Patent Law, the prior art means any technology known to the public before the filing date of a patent application in China or abroad.
However, there is a type of special patent application filed prior to the filing date of a patent application being examined, which is not prior art (according to the definition of the prior art), and which cannot be used to examine the inventive steps but can only be used to examine the novelty of the patent application. We name this special patent application as “conflicting application”. (in GUIDELINES FOR PATENT EXAMINATION)
So what does the conflicting application look like? How special it is?
Conflicting applications need to meet the following 3 conditions.
According to the Chinese Patent Law, the conditions that constitute a conflicting application are:
First, the prior application must be an application in China —in terms of PCT, the PCT application needs to enter the Chinese national phase— and the prior application date must be earlier than that of the application being examined .
Second, the publication date of the prior application is the same date with or after the application date of the application being examined.
Finally, the prior application could be applied by any entity or individual.
Note that it is any entity or individual, which is basically the same as the regulations of European Patent Convention AKA EPC, but different from the patent law of US and Japan.
There is a similar concept in Japan. Yes, there are conflicting applications in Japan. But Japan requires that the inventor of the prior application should be different from those of the application being examined, namely, the present application. It is also required that when the present application is filed, the prior application has a different applicant from the present application. We can say that there is no self-conflicting application from the same applicants in Japan
In the US, there is NO such concept as "conflicting application". The provisions in Article 102 (a) (2) of America Invents Act (AIA)include situations similar to China’s “conflicting application”, which can be regarded as AIA including the “conflicting application” here we discussed in the scenario of prior art.
In addition, according to AIA, the conflicting application in the US shall not be an application filed by the same applicant or a patent application filed by others but not published. So we can say that there is definitely no self-conflicting application from the same applicants in US.
As a case in the prior art, the US conflicting application could also be used for the examination of inventive steps. This is where Chinese applicants are easily confused when prosecuting patent application in US because we know conflicting application can only be used to examine the novelty in China.
From another direction, if the American or Japanese applicants want to apply for patents in China or Europe, they need to pay special attention to avoiding their own patent applications constituting conflicting applications.
To determine whether the prior application constitutes the conflicting application, we need to compare all the contents (including claims and specification) of the prior application with the claims of the application being examined.
For applicants from countries such as US and Japan where there is no self-conflicting application, when preparing to file a patent application in China, it is necessary to know as early as possible that China is implementing self-conflicting application. In order to avoid self-conflict, the related patent application should be filed on the same day as possible as they can.
However, filing the related patent application on the same day is (like)a theoretical best case. In reality, it is difficult for most applicants to ensure this.
In this case, the applicants need to pay special attention to how to avoid having self-conflicting applications in China. Our firm has a lot of experience on how to avoid this situation.
If you need assistance or have any question about this matter, please feel free to consult.
As a leading patent law firm in China, we are always glad to help.
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This is Peter Zhang from Beijing. Thank you for listening. See you next time. See less -