ADMINISTRATIVE DISPUTE OF UTILITY MODEL PATENT ISSUANCE INVOLVING THE “CUT-OFF DATE FOR CLAIMING DOMESTIC PRIORITY”

◆ First Instance Docket: (2015) JingZhiXingChuZi No. 2822

CASE 18 :

City of Beijing

[Headnotes]

In approval priority, if the Patent Office has issued for the earlier application Notification to Grant Patent and Notification for Recordation Formalities, and the applicant has accordinglycompleted the recordation, it shall issue for a later application Notification to Presume NonRequirement for Priority.

[Synopsis]

Plaintiff: Dongguan Richtek Electronics Co., Ltd. (Richtek) 

Defendant: State Intellectual Property Office (SIPO)

On June 13, 2014, Richtek filed a utility patent application with SIPO for “A portable multifunction pomp” (the first application). On June 14, 2014, SIPO issued a filing receipt. On September 17, 2014 SIPO issued Notification to Grant Utility Patent and Notification for Recordation Formalities, approving to grant utility patent and notifying Richtek to complete the recordation formalities. On October 17, 2014, Richtek paid the printing fee to SIPO, the first annuity and stamp duty. On October 30, 2014 Richtek filed with SIPO an invention patent application for “A portable multifunction pomp” (second application), requesting in the second application the priority of the first application. On October 31, 2014, SIPO issued a filing receipt for the second application. On November 19, 2014, SIPO published the first application for patent. On December 16, 2014, SIPO issued Notification for Assuming NonRequirement of Priority, denying priority, on the grounds that the first application has been granted for patent, not in condition for basis of priority under Article 32(2) of the Implementing Regulations under the Patent Law. Dissatisfied with the Notification, Richtek, on February 15, 2015, requested administrative reconsideration with SIPO, which, on March 24, 2015 decided to uphold the Notification. Still not satisfied with the administrative reconsideration decision, Richtek filed suit against SIPO, alleging: the first application has not been granted for patent when the second application was filed, and should be allowed for domestic priority basis, requesting cancellation of the SIPO decision on “Notification for Presumption of Non-Requirement for Priority.” 

The court found that, to accurately interpret Article 32(2), item 2, of the Regulations for “… has been granted for patent,” it should be systematically understood for patent granting. First, applicant after completing recordation and before publication date files a second application requesting priority, may result in double patenting in violation of Article 9 of the Patent Law. Secondly, no law requires SIPO to declare sua sponte invalid of the first application simply because the applicant has request priority on it for a second application, or presume abandonment of the first patent because of request for priority. Therefore according to Article 32(3) of the Implementing Regulations, when request for domestic priority is made on a first application, the first application has at least to be not yet published for granting for patent. Moreover, when applicant completed the recordation, it shall be viewed as consenting to SIPO’s grant for patent, and shall bear the legal consequences. At this moment, SIPO’s denial of priority based on a first application that has been recorded is in compliance with legal logic and work reality. In sum, the court, in accordance with Article 69 of the Administrative Procedure Law, dismisses plaintiff’s complaint.

[Judge’s Comment]

This case relates to interpretation of the cut-off time for claiming domestic priority, i.e., whether Article 32(2), item 2, of the Implementing Regulations for “… has been granted for patent” should be understood as “the grant has been published for patent.” The above item 2 merely indicates that “when request is made for priority in a second application based on a first application that has been granted for patent, the first application shall not be used for priority basis.” In this language, “… has been granted for patent” is likely to be taken as “grant for patent has been published.” But according to Patent Examining Guidelines, priority will be presumed as not requested for a second application if the Patent Office has issued the Notification to Grant for Patent and for Completing Recordation Formalities, especially when applicant actually completes the formalities. There may be conflicting understandings of the law and regulations. Precisely because of such conflicts, this case from the angle of avoiding double patenting, termination of patent rights, invalidation and preserving legitimate rights of the parties, discusses the basis for priority of a first application that has been recorded being denied for priority. This case further clarifies the cutoff time for domestic priority, with certain practical value as guidelines.