China: Inspiration On Usage Of Evidence And Application Of Grace Period For Non-Prejudicial Disclosures Yancheng Zhongwei Bus Co.,Ltd. v. NEOPLAN Bus GmbH (Article No. 28 from "China Patent Case Review 2015" by Beijing East IP Ltd.)

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Yancheng Zhongwei Bus Co.,Ltd. v. NEOPLAN Bus GmbH - Inspiration on Usage of Evidence and Application of Grace Period for Non-prejudicial Disclosures (Examination Decision No. 14484 by the Patent Reexamination Board on February 10, 2010)

In patent invalidation or infringement procedures, to prove an uncertain publication date of a prior art or prior design, a plurality of evidences is generally required to form a complete and reliable chain of evidence. Evidence collection and organization usually rely on patent attorneys' understanding of law and practical experiences.

Within a novelty grace period, certain pre-filing disclosures will not cause lose of the novelty of the subsequent patent application. There are rigorous restrictions on such grace period disclosures. It is of vital importance to determine whether a disclosure of an invention-creation before filing can be regarded as a grace period disclosure.

The petitioner for invalidation, Yancheng Zhongwei Bus Co.,Ltd.(hereinafter referred to as the petitioner), requested the Patent Reexamination Board (hereinafter referred to as "PRB") under the SIPO to invalidate a patent for design No. ZL200430088722.4, which was granted to NEOPLAN Bus GmbH (hereinafter referred to as the patentee) and titled "Vehicle." The filing date of the patent is September 23, 2004, and its priority date is September 20, 2004.

The petitioner submitted that the design of the patent had been disclosed in a periodical, Bus Aktuell, 2004(9) published in Germany on September 17, 2004 (hereinafter referred to as the Bus Aktuell), and thus the patent does not comply with the stipulations of Article 23 of the Chinese Patent Law (2001) and shall be invalidated.

The patentee did not acknowledge the authenticity of evidences submitted by the petitioner to prove the publication date of the Bus Aktuell. Moreover, the patentee asserted the published pictures in the above periodical were taken in a press conference held at a private place of the patentee, during which the patentee had notified the reporters that the exhibits shall not be disclosed to the public without permission of the patentee. Therefore, the patentee asserted that the photographs shown in the periodical is a disclosure made by another person without the consent of the patentee, pertaining to disclosures within grace period as provided for under Article 24 of the Chinese Patent Law (2001). Furthermore, the patentee asserted it is a scale model of a bus that the photographs in the above periodical had shown, instead of the bus itself.

The panel established by the PRB first confirmed that the Bus Aktuell is considered to be a publication under Article 23 of the Chinese Patent Law (2001), and its publication date is before the priority date of the patent involved. The panel further held the evidences used to prove the publication date of the Bus Aktuellhad been notarized and verified, and the authenticity of these evidences can be acknowledged. Among the above evidences, Hoser + Mende KG, a German corporation, provided a letter affixed with the seal of this corporation and an electric data recording of the corporation, which showed the Bus Aktuell was delivered to the corporation and then shelved on September 17, 2004. Therefore, it can be affirmed that the Bus Aktuellhad been disclosed to the public on September 17, 2004.

Regarding the patentee's assertion that the photographs shown in the periodical is a disclosure without the consent of the patentee, the panel held that the counter evidences presented by the patentee were unable to prove the patentee had notified the reporters not to publish the photographs taken at the press conference before September 23, 2004. Contrary, the panel deemed it illogical to ask the reporters attending the press conference for a new bus to keep secret for the bus. Furthermore, the panel held that at the press conference, the patentee used the model of a bus to present the design of the bus, rather than presenting the design of the model itself. Accordingly, the panel affirmed that it is the design of the bus that the periodical had disclosed.

On the above basis, the panel further affirmed the design of the patent involved is similar to the prior design published in the Bus Aktuell. That is, a design similar to the design of the patent had been disclosed in publications before the priority date of the patent. Therefore, the present patent is not novel under Article 23 of the Chinese Patent Law (2001), and shall be declared invalid.

Remarks

In this case, a key point is to determine whether the publication date of the periodical provided by the petitioner is earlier than the priority date of the patent. To prove the publication date, the petitioner submitted many evidences, including a document for proving that the Hoser Corporation and the Mende Bookstore merged together to form a new legal entity (Hoser + Mende KG), a document for proving that the merged Hoser + Mende KG engage in book supply service, a computer data recording for proving that the periodicalBus Aktuell was delivered to Hoser + Mende KG on September 17, 2004, and a witness for proving that theBus Aktuell was shelved for sale at the Hoser + Mende KG on September 17, 2004. The panel decided that the above evidences were reliable and formed a complete chain of evidence, which proved that the Bus Aktuell was disclosed to the public on September 17, 2004.

It should be noted that for this case, the Chinese Patent Law (2001) amended on August 25, 2000 shall apply,¹ in which it is provided that prior design of a design patent includes any design that was described in a printed publication in China and abroad, or used in public or otherwise available to the public in China before the effective filing date of the patent. The latest version of the Chinese Patent Law has adopted the standard of absolute novelty, ²which means any design in public use or otherwise available to the public abroad before the filing date of a patent also qualifies as prior design to the patent.

Evidences, especially prior art evidences, play a vital role in patent invalidation procedure. In the future, finding prior art or prior design evidences abroad to form a complete and effective chain of evidence will be important means of proof in patent invalidation and infringement cases. Among other things, the authenticity of evidence will significantly affect the evidentiary effect. The notarization and legalization formalities are common and necessary means for supporting the authenticity of any evidence formed abroad. The Patent Examination Guidelines clearly provides that any evidence formed abroad shall be notarized by the notary organs in the country concerned and verified by the Chinese Embassy or Consulate at that country, or shall be subject to any verification formalities provided in a treaty between China and that country. In patent invalidation or infringement cases, the notarization and legalization formalities may be used as a preliminary proof for the authenticity of evidences. If any evidence presented by one party fails to go through the notarization and legalization formalities, the other party would have the opportunity to exclude the evidence by simply pointing this formality defect to the court or the PRB.

However, the notarization and legalization formalities alone may be not enough to persuade the court and the PRB to consider evidence as trustworthy. To corroborate the truth of a matter asserted, a party concerned may gather evidences in various forms and from different sources so as to strengthen the connection between the evidences and the facts to be proved, thereby persuading the court or the PRB to find in his or her favor.

Another key point in this case is to determine whether the photographs in the periodical show the design of a bus. In a patent invalidation procedure, a premise to determine whether two designs of products are similar is that the two products pertain to identical or similar categories. Generally, a bus and a bus model are not considered as products of identical or similar categories. In this case, however, the model as exhibited at the press conference should not be regarded as a toy model in the shape of a bus, since this model was not intended for sale to toy consumers as a stand-alone product. Conversely, the model concerned in this case should be called as a design prototype that is commonly used in automobile industry for reflecting a design scheme of automobile. Therefore, the model exhibited at the press conference by the patentee shall not be regarded as a toy product. Moreover, since the target readers of the Bus Aktuell are normal consumers in the field of bus, it may be assumed that what the Bus Aktuell had intentionally shown is the design of a new bus, rather than the design of a bus model. Accordingly, it should be affirmed that the Bus Aktuell disclosed the design of the bus.

More broadly, it seems that this decision gives an answer as to whether a patentee's business presentation by means of a model of a product would disclose the design of the product. In commercial promotions, vendors often use models for display, and in most instances, the purpose of doing this is to introduce their new products, rather than introducing the models themselves. Based on the spirit of this decision, even if a commercial presentation merely discloses models without revealing real products, it can be assumed that the real products would be disclosed.

Besides, in this case, attention should also be paid on the determination of grace period for non-prejudicial disclosures. Generally, before the filing date (or the priority date where priority is claimed) of a patent, any disclosure of the patent's invention or design will render the patent not novel. As an exception to this rule, a novelty grace period means a patent does not lose its novelty due to certain disclosures occurred within this period. There are rigorous restrictions on such grace period disclosures. Article 24 of the Chinese Patent Law (2001) provides three types of disclosures that can be deemed to be within the grace period.³ Rule 30 of the Implementing Regulations of Chinese Patent Law (2001) provides specific rules on application of the grace period.⁴ In this case, the patentee attempted to request for a novelty grace period based on a notion that the design of the patent was disclosed by a third party without the consent of the patentee. However, the panel did not accept this request, since neither the timing nor the reasons of the request met the requirements for providing a grace period according to associated provisions.

The provisions of grace period differ from country to country. The Chinese Patent Law adopts a relatively narrow standard, which allows a six month grace period. Therefore, if an applicant disclosed his invention-creation at an exhibition as provided under Article 24 of the Chinese Patent Law, for example ten months before he filed patent applications for the invention-creation both in China and in another country on the same day, it is possible that the application in the other country may be given a grace period, but the application in China cannot enjoy a novelty grace period and thus lacks novelty. In view of this, if an applicant intends to exhibit or publish his invention-creation at an international exhibition or at an academic or technological meeting and then to file a patent application for the identical invention-creation in China at a later time, he shall assure such exhibiting or publishing will not cause lose of the novelty of the subsequent Chinese application. If there is such a possibility, it would be better to file a patent application in advance to claim priority.

Bus Case - PowerPoint Presentation (Chinese Version)

1 Article 23 of the Chinese Patent Law amended on August 25, 2000 provides that any design for which patent right may be granted must not be identical with and similar to any design which, before the date of filing, has been publicly disclosed in publications in the country or abroad or has been publicly used in the country, and must not be in conflict with any prior right of any other person.

2 The latest version of the Chinese Patent Law was adopted on December 27, 2008.

3 Article 24 provides that an invention-creation for which a patent is applied for does not lose its novelty where, within six months before the date of filing, one of the following events occurred: (1) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government; (2) where it was first made public at a prescribed academic or technological meeting; (3) where it was disclosed by any person without the consent of the applicant.

4 Rule 30 provides that: the international exhibition recognized by the Chinese Government referred to in Article 24, subparagraph (1) of the Patent Law means the international exhibition that is registered with or recognized by the International Exhibitions Bureau as stipulated by the International Exhibitions Convention.

The academic or technological meeting referred to in Article 24, subparagraph (2) of the Patent Law means any academic or technological meeting organized by a competent department concerned of the State Council or by a national academic or technological association.

Where any invention-creation for which a patent is applied falls under the provisions of Article 24, subparagraph (1) or (2) of the Patent Law, the applicant shall, when filing the application, make a declaration and, within a time limit of two months from the date of filing, submit certifying documents issued by the entity which organized the international exhibition or academic or technological meeting, stating the fact that the invention-creation was exhibited or published and with the date of its exhibition or publication.

Where any invention-creation for which a patent is applied falls under the provisions of Article 24, subparagraph (3) of the Patent Law, the patent administration department under the State Council may, when it deems necessary, require the applicant to submit the relevant certifying documents within the specified time limit.

Where the applicant fails to make a declaration and submit certifying documents as required in paragraph three of this Rule, or fails to submit certifying documents within the specified time limit as required in paragraph four of this Rule, the provisions of Article 24 of the Patent Law shall not apply to the application.

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