Patent Prosecution Procedures: China & Canada Compared

Transcription

1 Patent Prosecution Procedures: China & Canada Compared Elliott Simcoe Shuhui Wang/ 王述慧 Topics 1. Opportunities for Expedited Patent Prosecution 2. Duty of good faith/ good candor 3. Amendments during Patent Prosecution 4. The standards for novelty & obviousness 5. Invalidation Procedures Hongbin Li China: Expedited Examination Opportunities for Expedited Examination in China & Canada Patent Prosecution Highway Pilot Program SIPO-JPO One year period from Nov. 1, 2011 to Oct. 31, 2012 All claims in the SIPO application must sufficiently correspond to allowable claims in the JPO same scope, similar scope or narrower scope Voluntary amendment where necessary No government fee Other PPH Pilot Programs SIPO-USPTO: Dec.1,2011 Nov. 30,2012 SIPO-DPMA: Jan. 23, 2012 Jan. 22, 2014 SIPO-KIPO: Mar. 1,2012-Feb. 28,

2 Canada: PPH Pilot Canada: Special Order No declaration No government fee PPH Request form required Identification of claims corresponding to allowed claims from recognized office Voluntary amendment may be required to conform Canadian claims to allowed claims Examination within 2-3 months on each occasion application is ready for further examination Applicant declaration not required Simple assertion: failure to expedite will prejudice applicant s rights Government fee ($500 CDN/3100 CNY ) Examination within 2-3 months on each occasion application is ready for further examination 3 month term for response Abandonment/extension of time = loss of Special Order status, applicant cannot reapply 5 6 Canada: Green Technology Declaration required Applicant must declare that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources No government fee Examination within 2-3 months on each occasion application is ready for further examination 3 month term for response Abandonment/extension of time = loss of status, cannot reapply Good Faith / Duty of Candor in China & Canada 7 8 2

3 China: Duty of Good Faith & Prior Art Disclosures The description shall not contain commercial advertising or language belittling or slandering other persons or products of other persons When requesting substantive examination, the applicant shall furnish pre-filing date reference materials concerning the invention May be asked to furnish documents concerning the search or examination results for a filed counterpart application made in a foreign country Canada: Good Faith A good faith response to an Examiner: Lundbeck v. ratiopharm 2009 FC 1102: the applicant must state his or her own case fairly and must inform the Court of any points of fact or law known to it which favour the other side Mitigating decision: Corlac Inc. v. Weatherford Canada Inc FCA 228 Failure to respond in good faith only relevant during prosecution Once patent issues, not a basis for invalidating the issued patent 9 10 Canada: Prior art disclosure Canada: Prior art disclosure No pre-examination disclosure requirements Only required if Examiner requisitions usually only requisitions status and prior art cited in corresponding U.S. and EP applications Optionally can file details of prior art when requesting exam, which may avoid future requisition and may improve quality of first Examiner s Report If an applicant is aware of prior art that is more relevant than what is before the Examiner, it would be prudent to make such prior art of record during prosecution Not an ongoing duty once you respond, you are done unless the Examiner requests it again Some applicants treat as an ongoing duty with hope of expediting prosecution

4 China: Amendments During Patent Prosecution Amendment may not go beyond the scope of disclosure contained in the initial description and claims Amendments During Patent Prosecution in China & Canada Voluntary amendment When make a request for substantive examination Within three months after the receipt of the Notification of Entering the Substantive Examination stage 13 Amendments in response to the Office Action Only allow amendments made to the defects as indicated in the OA DO NOT allow amendments on the applicant s own initiative at this stage 14 Canada: Amendments During Patent Prosecution Only matter that can reasonably be inferred from the specification as originally filed or shown in the drawings as originally filed may be entered into the specification and drawings. Timing: Any time before allowance After allowance but before payment of issue fee, if amendment does not require a new search by the Examiner After allowance, if new search is required, then do not pay issue fee and reinstate application within 1 year together with amendment. Application will be returned to Examiner for further examination. Canada: Amendments During Patent Prosecution Post-grant amendments limited to corrections of clerical errors, re-examination, reissue or disclaimer

5 China: Standards for Novelty & Standards for Novelty & in China & Canada The test for lack of novelty Compare each claim separately with the relevant technical contents disclosed in each item of one cited reference Determine whether the technical fields, technical problems to be solved, technical solutions, and the expected effects are substantially the same China: Standards for Novelty & The test for lack of inventiveness: three steps Determine the closest prior art Account shall be first taken of the prior art in the same or similar technical fields Determine the distinguishing features and the technical problem Any technical effect which can be recognized from the contents may be used to redetermine the technical problem Canada: Standards for Novelty & The test for lack of novelty is difficult to meet: One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention. Determine whether the claimed invention is obvious to a person skilled in the art

6 Canada: Standards for Novelty & The notional person skilled in the art and the common general knowledge of that person are first identified. Differences between the claimed invention and the state of the art are then identified. The question to be asked is then, Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention? Thus, the standard for obviousness is whether any degree of invention is required. Invalidation Procedures in China & Canada China: Invalidation Procedures Canada: Invalidation Procedures The Patent Reexamination Board receives invalidation requests of patent rights Grounds Do not fall within definitions of inventions-creations (Art.2) Contrary to the laws or social morality (Art.5) Violate the rule of one patent per invention (Art.9) Do not request confidentiality examination prior to foreign filing (Art. 20.1) Do not possess Novelty, inventiveness and practical applicability (Art.22) Ineligible subject-matter (Art. 25) Do not meet requirements for the description and claims (Art. 26,3; Art. 26,4) Amendments go beyond the original disclosure (Art.33) Lack of essential features ( Rule 20.2) Divisional application goes beyond the disclosure of its parent (Rule 43.1) Canada does not have a patent opposition procedure. Post grant, re-examination is possible. Post grant, it is possible to apply to a Court to have a patent invalidated on grounds including: Lack of patentable subject matter Lack of novelty Lack of Utility Lack of Sufficiency of Disclosure

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