China: Drafting The Best Background Section Of Patent Applications

Last Updated: 3 January 2018
Article by Yali Shao and Ziqing Wu

How much disclosure is appropriate for the background section of a patent application? This question is difficult to answer, especially when it applies to a multinational application as different countries have different regulations regarding the background section of the application. For example, in some countries, the background section may constitute the applicant's admitted prior art (AAPA) against the invention claimed to be protected. Accordingly, it is important to know the regulations of different countries and draft a 'one size fits all' background section for a multinational application.

Practice in China

Generally speaking, in China, the background section does not constitute prior art against the invention claimed to be protected unless it is proved by a prior art document or other prior art evidence (ie, the AAPA principle is generally not applicable in China).

According to the Patent Examination Guidelines of the Patent Law, 'prior art' includes any technology which has been disclosed in publications in China or abroad, or has been publicly used or made known to the public by any other means in China or abroad, before the date of filing or the priority date where priority is claimed. Publications in the context of the Patent Law shall indicate or have other evidence to prove the date of public issue or publication. In other words, the date of public use or publication should be proved before the publication is regarded as prior art. Therefore, if there is no evidence to prove that the background section was known to the public, the examiner at the patent office or Patent Re-examination Board, or the judge at the court will not regard the background section as prior art.

Legal practice under the Patent Law verifies the above conclusion. For example, in Bing v the Patent Re-examination Board the patentee, Hu Bing ‒ who owned Chinese Patent ZL 01213645.X ‒ admitted in the oral hearing of the invalidation procedure that the content recorded in the background section belonged to prior art of the patent. As a result, the Patent Re-examination Board made the invalidation decision that Claim 1 did not have inventiveness in view of the combination of the prior art admitted by Bing and Reference 2. Bing was not satisfied with the board's decision and initiated an administrative lawsuit before the Beijing Intermediate Court, taking the board as the defendant. However, the first trial maintained the board's decision, so Bing appealed to the Beijing High People's Court. The court overturned the first judgment and made the final judgment that the patentee's self-admission of prior art in the oral hearing did not mean that the background section of the patent belonged to the prior art.

According to the court:

"in this case, even though Hu Bing admitted that the technology described in the first page of the present patent specification belongs to prior art, the prior art is actually defined as technology which has been disclosed in publications in China or abroad, or has been publicly used or made known to the public by any other means in China or abroad, before the date of filing. Once the prior art self-admitted by Hu Bing is confirmed by the law, anyone may file an invalidation against others' patents based on this confirmation, that is, Hu Bing's self-admission may harm the interests of others, so Hu Bing's self-admission behavior should be restricted, which does not have legal binding."

Further, a patent invalidation decision by the Patent Re-examination Board in 2012 with regard to Chinese Patent ZL 201020666050.0 evidenced a change in the board's attitude towards the AAPA. In this invalidation decision, the board did not regard the patentee's AAPA as prior art. According to the board:

"though the background technology appears in the form of prior art, it only shows it is known to the Merry Company itself, but cannot indicate that it is made known to the public in the general sense before the time of filing, so in the absence of other evidence to prove its publicly issue or publication date, the content in the Background [section] is taken as being known to the public at the publication date of the very patent along with its specification, which cannot be regarded as being in public status before the filing date of the patent according to the Patent Law, and thus cannot be used as the prior art relative to the Background [section] in the patent to assess the novelty and inventiveness."

The subsequent first judgment of the Beijing Intermediate Court in Zhao v the Patent Reexamination Board supported the above decision, as did the Guangdong High Court's final judgment in Yingjiaxun Industry v He Xin Precision Electronics (Dongguan) Co, Ltd with respect to nese Patent ZL 200620057997.5.


The above case law demonstrates that the background section is safe under existing practice in China, since the AAPA principle is generally not applicable. However, considering the fact that, in certain circumstances, the AAPA may be applicable in other jurisdictions such as the United States, Europe, Korea and Japan, it is possible that a third party could analyse the application and examination history of a patent in China and use this to support their opinions against its family patent in other countries. Therefore, applicants should be cautious when drafting the background section of an application to be filed in China, especially if the application is also intended to be filed in other countries. In such cases, applicants should also avoid admitting explicitly in the description, spoken or written opinion at a later stage (eg, in the response to the office action) or in the invalidation procedure that the background section belongs to the prior art in order to avoid unnecessary trouble. The basic strategy is to make the background section as short as possible. If a detailed background description is inevitable for the purpose of clearly describing the invention, it is better to add this content to the detailed description, rather than the background section.

This article has been published on August 02,2017, iam.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions