Prior art defence in Third Amendment to China's Patent Law

Rouse
Weng Li
[email protected]

The Third Amendment to the PRC Patent Law(中华人民共和国专利法), which was passed in 2008 and came into effect on October 1 2009, introduced two major changes in relation to 'prior art': it expanded the definition of 'prior art' and clarified the operation of the 'prior art' defence in infringement proceedings.

Prior to October 1 2009, the scope of prior art varied according to the nature of the disclosure: a universal novelty standard was applied in relation to prior publication, whereas a local novelty standard was applied in relation to the public use, or 'otherwise making known to the public', of the invention. Article 22.5 of the Third Amendment extended the scope of prior art, stating: “The 'prior art' referred to in this Law refers to any technology known to the public before the filing date of the patent application in China or abroad”. Thus, the universal novelty standard is no longer restricted to prior publications, but now applies to all forms of disclosure.

The Third Amendment also introduces, for the first time, a 'prior art' defence to infringement. Before the amendment, the prior art defence was found only in judicial interpretations of the Supreme People's Court. It was not part of the Patent Law. Article 62 of the Third Amendment provides that “During a patent infringement dispute, if the alleged infringer has evidence proving its or his technology or design belongs to the prior art or is a prior design, it will not constitute patent infringement”. 'Prior art' should be interpreted here in accordance with the extended definition found in Article 22.5. Where a Defendant in patent infringement proceedings relies on the 'prior art' defence, the Court or patent administrative authority will first determine whether or not the defence has been made out. If it has, there will be no infringement, and it will not be necessary for the Court or administrative authority to determine whether or not the allegedly infringing technology falls within the scope of the patent claims. That would be necessary only when the prior art defence has not been established.

It should be noted that, in determining whether or not the prior art defence has been established, it is not necessary to consider the novelty of the patented invention, or to make any comparison between the prior art technology and the patented invention. All that is relevant is whether or not the allegedly infringing technology is part of the prior art. This is consistent with the fact that the validity of a patent can be determined only in the context of revocation proceeding; it cannot be determined by a Court or administrative authority in the context of infringement proceedings.

Patents applied for before the effective date of the Third Amendment will not be subject to revocation on the ground that the patented invention had been used, or otherwise made known to the public, in foreign countries before the priority date. In infringement proceedings filed after October 1 2009, however, the Defendant would be able to rely on evidence of such disclosure in support of a 'prior art' defence. In practice, therefore, it will now be very difficult to obtain effective protection for such patents.

An important practical issue in the application of the Third Amendment will be determining what evidence of public use or other disclosure in foreign countries will be acceptable. Currently, the Patent Review Guide issued by the State Intellectual Property Bureau does not provide clear guidelines, and it is not yet apparent how the People's Court will assess the evidence under the Civil Procedure Rules and relevant Rules of Evidence. Despite this uncertainty, however, the Third Amendment should reduce much of the uncertainty that previously existed in this area of the law.