One Case a Day | China: Determination of PCT Applications as Conflicting Applications - Reexamination Decision No. 1696722 (2024)

Case Introduction
Applications filed earlier but published later are commonly referred to as conflicting applications or prior applications. In China, conflicting applications can only be used to assess novelty but not inventiveness. In contrast, in U.S. practice, prior applications can be used to evaluate both novelty and inventiveness.

PCT applications are unique, as they have their own international filing date and publication date during the international phase, can designate specific countries, and sometimes have national phase applications. Whether a PCT application can serve as a conflicting application varies across countries.

In the United States, it is not required for a PCT application to enter the national phase; as long as the PCT application designates the U.S., it can be used as a prior application to assess the novelty and inventiveness of U.S. patent applications. For the EPO, a PCT application must enter the national phase to be considered a conflicting application. This case clarifies that for a PCT application to become a conflicting application in China, it must enter the Chinese national phase. These subtle differences should be considered when conducting FTO searches.

Rejection is not the end. After the rejection in this case, the applicant also filed a divisional application to seek protection for the technical content disclosed in the case. This strategy is worth learning from for all applicants.

Case Information

• Application Number: 201910486183.5
• Invention Title: MPM List Construction Method, Chroma Block Intra Prediction Mode Acquisition Method and Device
• Reexamination Decision Number: No. 1696722
• Case Number: 1F609940
• Decision Date: July 25, 2024

Key Points of the Decision
Applications filed with the State Intellectual Property Office before the filing date and published or announced on or after the filing date are considered prior applications. For a prior application to constitute a conflicting application, it must meet temporal conditions, requirements regarding the country or region of the prior application, and content requirements. A prior application constituting a conflicting application must be a patent application filed with the State Intellectual Property Office; only prior applications that are Chinese patents or patent applications can constitute conflicting applications.

PCT international applications, after entering the Chinese national phase, have the same effect as patent applications directly filed in China.

A PCT international application with an international filing date earlier than the filing date of the involved patent application and a Chinese national phase publication date later than the filing date of the patent application can serve as a conflicting application for the involved patent application.

When using a conflicting application to assess novelty, the text of the PCT international application after entering the Chinese national phase, as published or announced by the Patent Office, should be used as the conflicting application.

Case Summary
The filing date of the involved application is June 5, 2019.

PCT Application: Application No. PCT/CN2020/084488, priority date April 12, 2019 (earlier than the filing date of the involved application). The filing date of the PCT application is April 13, 2020, and its publication date is October 15, 2020.

Evidence 1: The patent application when this PCT application entered the Chinese national phase, with application number 202080028106.6, filing date April 13, 2020, priority date April 12, 2019, and publication date December 10, 2021.

The rejection decision and the Reexamination Board used Evidence 1 as a conflicting application to assess the novelty of the involved application.

The Reexamination Decision stated:

Article 22, Paragraph 2 of the Patent Law: Novelty means that the invention or utility model is not part of the prior art; nor has any entity or individual filed an application for the same invention or utility model with the State Intellectual Property Office before the filing date, and such application is recorded in patent application documents published or patent documents announced on or after the filing date.

1. Regarding the Applicable Conditions for Conflicting Applications and the Determination of Evidence Text
   According to Section 2.2 of Chapter 3, Part II of the Patent Examination Guidelines: Under Article 22, Paragraph 2 of the Patent Law, in determining the novelty of an invention or utility model, any patent application document filed with the Patent Office by any entity or individual for the same invention or utility model before the filing date and published or announced on or after the filing date (commonly known as "filed earlier, published later") may impair the novelty of the patent application filed on that date. Such patent applications that impair novelty are referred to as conflicting applications.

Conflicting applications also include international patent applications that have entered the Chinese national phase and meet the following conditions: international patent applications filed by any entity or individual before the filing date, published or announced by the Patent Office on or after the filing date, and for the same invention or utility model.

Based on the above provisions of the Patent Examination Guidelines, in novelty examination, to avoid double patenting, the comparison documents for novelty include not only prior art but also Chinese patent application or patent documents filed before the filing date and published or announced on or after the filing date (for simplicity, such documents are referred to as "prior applications").

For a prior application to constitute a conflicting application, the following conditions must be met:

First, requirements regarding the subject: According to the current Patent Law, prior applications filed by any entity or individual may constitute conflicting applications.

Second, requirements regarding temporal conditions: Only prior applications filed before the filing date of the involved patent application and published or announced on or after the filing date of the involved patent application may constitute conflicting applications.

Third, requirements regarding the country or region of the prior application: A prior application constituting a conflicting application must be a patent application filed with the State Intellectual Property Office; only prior applications that are Chinese patents or patent applications may constitute conflicting applications.

Fourth, requirements regarding content: The prior application should contain the same invention or utility model as the involved patent application.PCT international applications, after entering the Chinese national phase, have the same effect as patent applications directly filed in China. A PCT international application with an international filing date earlier than the filing date of the involved patent application, a Chinese national phase publication date later than the filing date of the involved patent application, and for the same invention or utility model can serve as a conflicting application for the involved patent application.

In this case, the filing date of the involved application (June 5, 2019) falls between the priority date (April 12, 2019) and the filing date (April 13, 2020) of Evidence 1. Upon verification, the priority claim for the first part of the content in Evidence 1 is valid. This first part of Evidence 1 meets the conditions of an international patent application filed by any entity or individual before the filing date and published or announced by the Patent Office after the filing date of this application, i.e., it satisfies the temporal conditions for a conflicting application.

At the same time, the priority claim for the second part of the content in Evidence 1 is invalid. This second part cannot be used as a conflicting application to assess the novelty of the involved application.