参考资料：Bindu Chib教授的课件
What laws in China?
PRC Patent Law(PL)
PRC Patent Regulations(PR)
Note: China's patent law revised in 2021. This is the pre 2021 law. However, important changes will be explained.
Introduction
Patents are granted to innovations in all fields of technology. Examination for patentability is made by the Patent Office in country of application.
Companies compete with each other to file patents and safeguard their rights which help them lock market share related to an innovation.
If disclose the invention to the world, the inventor can gain a 20 year exclusivity to exclude others from using the technology in a commercial way.
Right to exclude others, but not a right to use the invention. If A's patented technology incorporates other patented technology, A must obtain permission from the others,called 'cross-licensing'(交叉许可).
Obtaining a patent right is not easy and time consuming and expensive.
Grant of a patent can be challenged by anyone.
Article 1 purpose 目的
This Law is enacted for the purpose of protecting the lawful rights and interests of patentees, encouraging invention-creation, promoting the application of invention-creation, enhancing innovation capability, promoting the advancement of science and technology and the economic and social development.
5 Conditions for patentability
Subject matter
Article 2 What the invention must be-保护的内容：发明创造。以及三种类别的定义。
For the purposes of this Law, invention-creations mean inventions, utility models and designs.
Inventions mean new technical solutions proposed for a product, a process or the improvement thereof.
Utility models mean new technical solutions proposed for the shape and structure of a product, or the combination thereof, which are fit for practical use.
Designs mean, with respect to a product, new designs of the shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application.
Invention? Utility models? Design?
Invention is a full patent.
Article 5 what it cannot be-被禁止的发明
Patent rights shall not be granted for invention-creations that 1violate the law or social ethics, or 2harm public interests.
Patent rights shall not be granted for inventions that are accomplished by relying on genetic resources which are obtained or used in violation of the provisions of laws and administrative regulations.（3rely upon genetic material obtained without permission）
Article 25 what it cannot be-不被授予专利（不能叫做invention）的东西
Patent rights shall not be granted for any of the following:
(1) scientific discoveries;
(2) rules and methods for intellectual activities;
(3) methods for the diagnosis or treatment of diseases;
(4) animal or plant varieties;
(5) substances obtained by means of nuclear transformation; and
(6) designs that are mainly used for marking the pattern, color or the combination of the two of prints. *A25里的这些被排除在外的东西不包括对于它们的应用。如果运用以上这些东西发明了新的technical solution，就可以申请专利。例子：科学发现（不是发明）--卤化银在光照下是光敏的；应用了这个发现的发明--照相胶卷的制作过程和方法。
A.22 三个条件！！
Article 22 专利申请条件
Inventions and utility models for which patent rights are to be granted shall be ones which are novel, creative and of practical use.
....
novelty
A.22 ...Novelty means that the invention or utility model concerned is not an existing technology; no patent application is filed by any unit or individual for any identical invention or utility model with the patent administration department under the State Council before the date of application for patent right, and no identical invention or utility model is recorded in the patent application documents or the patent documentations which are published or announced after the date of application.
... Invention or technical solution must be 'new'. Not identical to previous filed ones.
In A.22 PL, must not be "existing technology".1)Not filed in China before filing date of application 2)Not Published in China after filing date of application 3)Not otherwise known to the world (part of prior art) before filing date of application
Q: How to decide an invention is new/novel?
A: Invention must be new on date of filing -> not known to the public -> Identical invention not filed; Not part of prior art; Not enabled
-Search for existing technology or 'prior art' in the worldwide patent system-WIPO. Also, CPO, EPO etc.
-PRC PO has examination guidelines on novelty. Invention or utility model does not form part of the prior art, nor has not been filed before the date of filing.
-Prior art, means public disclosure and enabling disclosure, includes all technical information and material made available to public, no matter in what form (written, oral..).
-Public disclosure is disclosed, used, or made known to public in China or abroad.
-Enabling disclosure is contents from which the public(an average person skilled in the art) can obtain substantial technical knowledge. Implication gained is, that R&D effort, results to be kept confidential till patent application is filed.
-Reference documents cited for determining whether an invention or utility model has novelty or inventive step, including patent and non-patent documents.
Q: How to decide identical invention?
A: In PRC PO, 'identical invention' occurs where skilled person comparing technical field, technical problems, solutions, and expected effects, and that are substantially the same as that of the reference document.
Q: Who decides if 'novel'?
A: Patent examiner in country of filing & Patent examiners drawn from different technical backgrounds(an expert skilled in the art that can judge whether the tech is new)
Q: At what point is 'novelty' determined?
A: filing date
A note on novelty
Grace period: a period during which disclosure does not defeat novelty.
In China, is 6 month before filing, disclosure at certain international exhibitions/ conferences, or in breach of confidentially agreements.
Article 24 Within six months before the date of application, an invention for which an application is filed for a patent does not lose its novelty under any of the following circumstances: (1) It is exhibited for the first time at an international exhibition sponsored or recognized by the Chinese Government; (2) It is published for the first time at a specified academic or technological conference; and (3) Its contents are divulged by others without the consent of the applicant.
Q：Why do we demand 'novelty'?
A: The goal of patent law is disclosure of the technology in exchange for exclusivity. Therefore, if already known then no patent right can be granted.
Inventiveness (creativity)
technical solution must show technical progress (advancement)
A.22 ...Creativity means that, compared with the existing technologies, the invention possesses prominent substantive features and indicates remarkable advancements, and the utility model possesses substantive features and indicates advancements.
...
PRC PO - Examination Guidelines - definition of 'prominent substantive features'突出的实质性特征 2.2
Inventive step is creative - it was non-obvious to a person skilled in the art.
根据现有知识，本方面的专家不能很简单地用逻辑分析，推断，或者做很少量的实验得出这个发明。
失败例子： 已知技术：用轻型材料作建材； 新技术：用铝做建材。 众所周知，铝很轻，这个新技术没有跨出创新的一步
成功例子：已知技术：胶卷相机；新技术：数码相机。
Q: What is remarkable advancement?
A: The invention can produce advantageous technical effect compared with the prior art.
- Invention has overcome defects and deficiencies in existing technology, OR
- Invention has provided a different technical solution to solve a technical problem, OR
- Invention represents a certain new trend of technical development
Q: What is an inventive step?
A: Examiner considers the follows as a whole: technical solution, technical field to which the invention relates, technical problem solved and technical effects produced by the invention.
Q: What is not an inventive step?
A: Difference in courts: mere change of size, making a product portable, the reversal of parts, the change of materials, or the mere substitution by an equivalent part or function.
Pratical applicability
A.22 ...Practical use means that the said invention or utility model can be used for production or be utilized, and may produce positive results.
...
Disclosure
Enable others recreate/implement the technology immediately after 20 years.
Article 26
When a person intends to apply for an invention or utility model patent, he shall submit the relevant documents, such as a written request, a written description and its abstract, and a written claim.
In the written request shall be specified the name of the invention or utility model, the name of the inventor or designer, the name or title and the address of the applicant and other related matters.
The written description shall contain a clear and comprehensive description of the invention or utility model so that a technician in the field of the relevant technology can carry it out; when necessary, pictures shall be attached to it. The abstract shall contain a brief introduction to the main technical points of the invention or utility model.
The written claim shall, based on the written description, contain a clear and concise definition of the proposed scope of patent protection.
With regard to an invention-creation accomplished by relying on genetic resources, the applicant shall, in the patent application documents, indicate the direct and original source of the genetic resources. If the applicant cannot indicate the original source, he shall state the reasons.
