There is a Chinese proverb, “Open spears are easy to dodge, hidden arrows are hard to guard against,” which also applies to the patent battlefield.
In the patent arena, the most common offensive and defensive strategy among competitors is to file invalidation requests against granted patents. Many enterprises, due to related infringement lawsuits and other disputes, directly engage in head-to-head battles through invalidation cases. Since both sides are openly battling, they can be dragged into a quagmire of multiple mutual invalidation applications, resulting in huge human and financial costs, ultimately causing mutual harm.
Is there a strategy to defeat the enemy invisibly? The answer is public opinions.
I. Laws and Regulations
Chinese patent law does not explicitly cover “public opinions”; instead, it is addressed in the “Rules for the Implementation of the Patent Law” and the “Patent Examination Guidelines,” as follows:
Article 48 of the Rules for the Implementation of the Patent Law of the People’s Republic of China: From the date of publication of a patent application for an invention to the date of the announcement of the grant of the patent right, anyone may submit their opinion to the patent administration department of the State Council on any patent application that does not comply with the provisions of the Patent Law, stating their reasons.
Section 4.9, Chapter 8, Part II of the Patent Examination Guidelines: Any person who submits an opinion to the patent office regarding an invention patent application that does not comply with the provisions of the Patent Law shall have the opinion included in the application file for consideration by the examiner during substantive examination. If the public opinion is received after the examiner has issued a notice of granting the patent right, it need not be considered. The handling of public opinions by the patent office does not require notifying the person who submitted the opinion.
Public opinion, as a patent opposition procedure, can be seen as a “hidden arrow” in patent warfare. Below are some aspects of public opinions as a hidden arrow.
II. Why Submit Public Opinions
- Safety Considerations: If routine monitoring or project initiation processes suggest that a patent application might pose an obstacle to the implementation of your product or technology and is difficult to circumvent, you should not sit idly by but take early action to intervene, hinder its authorization, or force it to narrow its protection scope.
- Cost Considerations: Due to procedural differences, the workload varies significantly. The cost of submitting a public opinion is much lower compared to invalidation procedures.
- Being Prepared: Forewarned is forearmed. If a public opinion is submitted but not adopted, and the patent application is granted, the search and analysis conducted during the public opinion submission can be supplemented and improved, enabling a quick initiation of invalidation procedures against the patent.
III. How to Submit Public Opinions
- Writing Public Opinions To ensure that our submitted public opinions are fully considered by the examiner, we need to carefully study the application documents and conduct thorough searches. After screening and analyzing the retrieved comparative documents, we should provide a comprehensive evaluation of how the current claims of the patent application do not meet the authorization requirements, much like writing an office action notice. This evaluation should be accompanied by the comparative documents.Comprehensive evaluation is not limited to novelty and inventiveness; it can also include other defects and reasons such as insufficient disclosure, lack of support from the description, and lack of unity, which can all be raised in the public opinion.
- Requirements for Comparative Documents Comparative documents used for submitting public opinions can be published patent literature, journals, magazines, papers, etc. If the prior art submitted is in a foreign language, translation is usually not required. However, if the requester believes that the foreign document is particularly relevant and wants to increase the likelihood of its adoption by the examiner, they may consider translating relevant paragraphs into Chinese or providing a Chinese translation of the foreign document (especially if it is not in English).
- Timing for Submitting Public Opinions Public opinions can be submitted to the patent office from the date of publication of a patent application for an invention until the date of the announcement of the grant of the patent right. Since some applications are fast-tracked through PPH requests or prioritized examination requests, leading to faster issuance of office actions and responses, it is advisable to submit public opinions early to increase the likelihood of being considered in the first office action.If public opinions are submitted after the examiner has issued an office action, it is possible to review if the applicant has amended the claims and conduct supplementary searches and analyses based on the current claims and the comparative documents cited by the examiner in the office action. This can assist the examiner in strengthening the rejection reasons and evidence. Public opinions should be submitted promptly after preparation.If public opinions are submitted after the examiner has issued the notice of grant, they will not be considered.
- Handling of Public Opinions by the Examiner After submission, public opinions will be included in the application file for the examiner’s consideration during substantive examination. The examiner does not need to notify the person who submitted the public opinion of its handling.Since the launch of the “China and Multi-Country Patent Examination Information Inquiry” system by the National Intellectual Property Administration, the public can register and check the examination status of patents (only available to Chinese citizens).Through this system, we can review the content of the office actions issued by the examiner and obtain the examiner’s contact information. Therefore, after seeing an office action, those who submitted public opinions can contact the examiner by phone to explain the reasons why the patent application should not be granted and to inquire if there are any questions regarding the submitted public opinions.
- Frequency of Submitting Public Opinions Since patent office examiners do not provide feedback on the handling of public opinions, after submitting, continuous monitoring of the case’s examination progress is necessary. Depending on the situation, appropriate actions should be taken, such as checking if the examiner considered the comparative documents and reasons in the public opinion, examining how the applicant amended the claims, and deciding if additional evidence needs to be submitted or if further public opinions should be submitted. Telephone meetings with the examiner may also be necessary.Therefore, public opinions may be submitted once or multiple times depending on the specific case. If the objective is clear, namely to have the patent application rejected or its protection scope narrowed, it is essential to monitor the case’s progress, maintain communication with the examiner, and be prepared to submit additional public opinions.
- Applicant’s Awareness of Public Opinions Through the “China and Multi-Country Patent Examination Information Inquiry” system, under the “Examination Information” section in the “Intermediate Documents” tab, applicants can check the documents received by the patent office. If the applicant determines that a document on a particular date was not submitted by themselves (or their agency), it is likely a public opinion submitted by another party.If the applicant logs in as a public user, they cannot view this content. Therefore, the applicant can only know that public opinions have been submitted against their application, but not the specific content of those opinions.If the patent applicant requests to review and copy documents from the patent office, the public opinions included in the file can be reviewed and copied. However, if the public opinions were submitted anonymously, the applicant cannot accurately determine who submitted them.
- Methods for Submitting Public Opinions In invalidation request cases, detailed requester information (proof of subject qualification) is required regardless of whether the requester is a straw man. However, public opinions can be submitted either with a real name or anonymously. Anonymous public opinions need to be submitted in person or mailed to the patent office.If anonymity is not required, and the public opinion consists only of a statement without attachments, it can be submitted electronically through an agency. If the public opinion includes both a statement and attachments, it still needs to be submitted in person or by mail to the patent office.
IV. The Impact of Public Opinions
The effectiveness of submitting public opinions is reflected in several practical observations and recommendations:
- Timing: It is generally most effective to submit public opinions before the examiner issues the first office action. This increases the likelihood that the examiner will consider the evidence provided in the public opinions.
- Monitoring and Communication: Using the “China and Multi-Country Patent Examination Information Inquiry” system, you can track the progress of the application and any modifications made by the applicant in response to office actions. Typically, the examiner will not easily replace the closest prior art cited in the first office action, so subsequent public opinions should focus on supplementing searches and arguments based on the applicant’s amendments.
- Data Analysis: In cases where the patent application is withdrawn, about half of the cases involve domestic applicants. Some domestic applicants do not respond to the first office action or fail to request substantive examination. If a competitor submits public opinions against a patent application, it indicates the application’s potential value. Abandoning such applications prematurely is regrettable. Before deciding to abandon an application, applicants should check if any public opinions have been submitted against it, which might influence their decision to continue pursuing the patent.
“Hidden arrows are hard to guard against, and they can be harmful.” Those who submit public opinions can use this procedure to attack a competitor’s patent application strategically. Conversely, as patent applicants, you should not abandon your applications lightly and should make every effort to respond effectively to each office action. By persuading the examiner, you might also deflect your competitor’s invisible arrows.
V. Conclusion
Public opinions are a strategic tool in the patent battlefield, allowing entities to challenge patent applications subtly yet effectively. By understanding the legal framework, cost considerations, and strategic timing, entities can leverage public opinions to influence the outcome of patent examinations. Whether submitting or responding to public opinions, maintaining vigilance and proactive communication with patent examiners is crucial. This strategy not only helps in potentially invalidating competitors’ applications but also ensures the robustness and defensibility of one’s own patents.