Priority Verification in Different Phases During Patent Examination

By Sun Guohui, Li Bin,[Patent]

Introduction

The Convention Priority is derived from the Paris Convention for the Protection of Industrial Property of 1883. By “priority,” it means that an applicant, having filed an initial application in a member country of the Convention, may claim the initial filing date as the priority date for certain aspects of his subsequent filing covering the same subject matter in another member country within a specified period.


The concept of priority is defined in Article 4 A of the Paris Convention: Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed. The effect of priority is further defined in Article 4 B: Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any act accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union. The “period” in the preceding paragraphs is further specified in Article 4 C as, “The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.”


No country in the world has mandatory requirement by patent statutes or regulations for substantive examination of patent priority. In China, priority is mentioned in Articles 29 and 30 of the Patent Law, and in Articles 31, 32 and 33 of the Rules for the Implementation of the Patent Law. In the preliminary examination phase, the examination is conducted on the claimant to the priority, priority period, priority claim, and the applicant of the subsequent application. At the substantive examination phase, the examination is to verify whether the application is on the same subject matter, and whether the prior application was the initial application, etc., with regard to three specific timings: first relates to any reference with identical or pertinent subject matter with that of the application, which was published between the priority date and the filing date of the application; the second relates to any reference that discloses an identical subject matter in whole or in part with that of the application, which was filed between the priority date and the filing date of the application, and published on or after the filing date of the application; the third relates to any reference that discloses an identical subject matter in whole or in part with that of the application, which carries a priority date between the priority date and the filing date of the application, and published on or after the filing date of the application. The substantive verification of priority may be conducted in any of the above three circumstances, i.e., verification is not mandated in the substantive examination phase. In subsequent proceedings of the patent invalidation, if any, the Patent Reexamination Board will normally conduct verification per request of invalidation requester.


An applicant claims priority as his right with certain risks in that such a claim is not as of right verified during substantive examination, and once a patent is granted, its priority date is presumed as valid. But this presumption is rebuttable which weakens the effect of the priority. In this sense, a priority verification in the preliminary, substantive examination, or the subsequent invalidation proceedings plays an essential role in the fate of a patent application with priority.


Case analysis

Next, we will discuss a few cases involving priority verification in the preliminary examination phase, the substantive examination phase and the invalidation proceedings.


I. Priority verification in preliminary examination

[Case 1]

Koninklijke Philips N.V. had an international application, under No. 2007800489105, filed on December 24th 2007, which is a later application. A prior art was located for a Chinese utility model application under No. 2006201733176 filed by Philips (China) Investment Co., Ltd.


As shown, the prior application and the subsequent application claiming priority based on the prior application were in the names of different applicants. When the international application entered the national phase, the applicant declared priority; however, no verification was conducted as to the name of the applicant in the priority documents during preliminary examination. In the ensuing substantive examination, the examiner, in verifying the priority document, noticed the discrepancy and inconsistency of applicants’ names, and thus denied priority, commenting that the prior application as an interference application would defeat novelty of the subsequent application. Upon receiving notice of the first office action, the applicant produced evidence of assignment. According to Section 6.2.2.4, Chapter 1, Part 1 of the Patent Examination Guide, when claiming priority, the applicant who is not the named applicant of record in the prior application should within three months of filing the application, produce signed or sealed documents showing assignment by all named applicants of the prior application; where the applicant fails to produce such document on the priority transfer before the above period expires or provides any document or the document as produced fails to comply with the requirement, the examiner shall issue an office action to the effect that priority is deemed as not claimed.


As indicated in the case above, a formal defect in priority claims discovered at the stage of substantive examination results in failure of application being not granted in this case; had it been duly noticed at the preliminary state that the applicant’s name was different from that of record in the priority document, and had the applicant been duly made aware, chances are that priority may have been preserved. On the other hand, the applicant was blameworthy as well, given that it was a claimant of its own priority right, despite the oversight in preliminary examination which might have been avoided had it complied with requirement by submitting the assignment documents, so as to preserve the priority. Therefore, both the applicant and the examiner should try to prevent any possible loss of right for the applicant.


II. Priority check in substantive examination

[Case 2]

Meishang VIA Telecom, had an application filed on August 3rd 2009 under No. 2009101618212 claiming priority of a U.S. provisional application US61/140885, filed on December 25th 2008. The named applicant of the germinal application was Anthony Lee, and the application was transferred by assignment to VIA Telecom on December 25th 2008.


The application contained 14 claims, among which claims one to seven were method claims, and claims eight to fourteen were product claims.


Claim one: A method for reducing network synchronization time in a dual-mode access terminal, wherein the dual-mode access terminal supports a first and a second network, comprising: determining if CDMA system time is available within the dual-mode access terminal; in response to determining that CDMA system time is available: forgoing acquiring the CDMA system time through a pilot acquisition procedure; reading the CDMA system time from a memory, and programming the CDMA system time into a system time unit; and in response to determining that CDMA system time is not available: acquiring the CDMA system time through the pilot acquisition procedure; and programming the CDMA system time into the system time unit.


Claim eight: A dual-mode access terminal with reduced network synchronization time, wherein the dual-mode access terminal supports a first and a second network, comprising: a memory; and a system time unit, coupled to the memory; wherein the dual-mode access terminal is configured to determine if CDMA system time is available within the dual-mode access terminal; if CDMA system time is available within the dual-mode access terminal, the dualmode access terminal forgoes acquiring the CDMA system time through a pilot acquisition procedure, reads the CDMA system time from the memory, and programs the CDMA system time into the system time unit; and if CDMA system time is not available within the dual-mode access terminal, the dualmode access terminal acquires the CDMA system time through the pilot acquisition procedure and programs the CDMA system time into the system time unit.


In substantive examination, the examiner located a reference titled “E-UTARN - CDMA2000 Connectivity and Interworking: Air Interface Specification Revision 0, 3GPP C.P0087-0 Version 0.70,” (Reference 1) publication date January 29th 2009, which disclosed the subject matter of the application. Since Reference 1 was a PX reference published between the priority date and the filing date of the application, its priority date was needed verification.


Upon verification found that the independent claim 1 stated that in order to reduce network synchronization time of the CDMA access network, “In response to determining that CDMA system time is available, the method includes forgoing acquiring the CDMA system time through a pilot acquisition procedure, reading the CDMA system time from a memory,” and “In response to determining that CDMA system time is not available, the method includes acquiring the CDMA system time through the pilot acquisition procedure.” The prior application stated that “the system time is acquired on the basis of the CDMA-2000 system, and after a network acquisition command is returned, the access terminal enters the pilot acquisition state.” It is obvious that the prior application did not mention how to acquire system time when the CDMA system time is or is not available, which can never be directly and undoubtedly determined by a person skilled in the art. Thus, Claim one cannot have the priority.


For the same reason, claim eight that provides the technical features corresponding to those of claim one cannot have the priority, either.


Thus, the dependent claims from the above two claims also cannot have the priority.


Moreover, as the priority document was a provisional application in the U.S., a provisional application is less than perfect in both form and content as compared with an official one. When a provisional application is used as priority, a subsequent application may very likely contain features other than those disclosed in the provisional application, in that the provisional application may be only an initial idea or a technical document yet to complete. Therefore, when a conventional patent application uses another provisional application as priority, it is likely that the priority is found untenable. After verification, it was found that the subsequent application could not have the priority of the prior application, and the comparison document formed an X reference that affected the creativity of the claims.


III. Priority verification in the invalidation procedure

[Case 3]

On April 30th 1986, Focke & Co. (GmbH) filed a patent application in the Patent Office of China for “A Fliptop Box for Cigarettes,” application number 86103037.0, claiming priority on basis of two German applications P3515775.5 (filed January 2nd 1985) and P3522614.5 (filed June 25th 1985).


Upon examination, the Patent Office approved and published the application on September 13th 1989. The patent covered a flip-top box for cigarette bundles.


On September 22nd 1993, G.D S.p.A. requested the Patent Reexamination Board of the Patent Office of China to invalidate the above invention patent of Focke, on the grounds that the patent lacked novelty and inventiveness. On reexamination, the invalidation requester G.D argued that the patent could not have the priority because the two prior German applications failed to disclose “the circumfence with an angular transition at the vertical edge” which was an essential and necessary element. Also the Tobacco International TJ1 3/1985 (published in June 1985) that was published between the filing date and the priority date of the patent was sufficient to destroy patentability.


The invalidation requester challenged the priority of the issued Focke patent, inferring that the patent claims were not creative as long as the priority was untenable. Thus, the Patent Reexamination Board had the duty to conduct a verification of the priority issue. As shown, priority exhibits a great force in the subsequent proceedings and provides a breakout point for the public to invalidate patents. Although a weapon against third parties, priority has its weaknesses, i.e., the right owner, when requesting priority, should act to determine whether priority can be truly enjoyed by him in accordance with the local laws or regulations, so that the weapon is kept in his hands other than in the hands of any other person.


In the case above, the patent owner Focke argued that no objections were raised against the patent priority by the examiners in the preliminary examination phase and the substantive examination phase; in the patent invalidation phase, the Patent Reexamination Board examined the priority of the patent and declared the priority invalid, leading to the invalidation of the patent. As the priority is a right claimed by the applicant other than granted by the Patent Office, the responsibility for the priority right lies in the applicant, i.e. the applicant should try to clarify whether he can enjoy the right at the time he claims it.


Conclusion

In light of current practice, the priority verification is on the formal requirements in the preliminary examination phase or on the subject matter of the priority in the substantive examination phase. In these two phases, the verification is done according to any intermediate document, such as, any PE, PX or PY document that examiners search and find. In the patent invalidation procedure, the verification is done upon the request of the invalidation requester. From the perspective of applications, as priority is a right that an applicant claims, the applicant should be responsible for his right, that is, while enjoying the right, he should try to ascertain whether he is truly entitled to such right. From the perspective of examinations, examiners do not necessarily have to verify whether priority is substantively enjoyed by an applicant. In the three cases above, the priority verifications were done passively, when an intermediate reference is located by an examiner during substantive examination or when the priority is challenged by a third party in the subsequent invalidation proceedings. However, an applicant who claims priority should positively work to ascertain whether the claimed priority is truly enjoyed by him, and examiners should try to verify the priority at an appropriate timing. When the passive and positive sides are combined, it will give full play to priority and minimize the possibility that an applicant loses his rights due to untenable priority. To sum up, applicants should fully utilize the priority doctrine on the principle of honesty and credibility to maximize their personal interests.


(Translated by Ren Qingtao)

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