Plagiarism is a crime that may inhibit the creation of new inventions and eventually undermines the development of edge-cutting technology in a country. For this reason, Mainland China Intellectual Property Administration (CNIPA) has, in the past years, made remarkable progress in terms of legislative and administrative measures, and in turn, provided varying useful tools to curb plagiarism.
To prevent a patent application or granted patent relating to a plagiarized invention from maturing into a patent or remaining valid, in addition to filing an invalidation action, obtaining a patent evaluation report regarding patentability (for utility models and design patents), filing a third-party observation or reporting to CNIPA regarding a patent application suspect of plagiarism are also possible options. Moreover, a patent search report rendered by the Patent Search Centre, an institution under CNIPA, can be used as evidence to prevent an application from maturing into a patent or to cancel a granted patent of concern.
The table below is a comparison among the five routes mentioned above.
A brief introduction of the five routes is as follow. While there are litigation and administrative investigation/raid available, due to the complexity of the issue and the high costs involved, they are omitted temporarily.
1. Invalidation Action
In general, filing an invalidation action is the most formal procedure to challenge the validity of a patent. According to Article 45 of the Chinese Patent Act, from the announcement date of the granting of a patent, any entity or individual may file an invalidation action with CNIPA. As there is no limitation on the eligibility of an invalidation petitioner, it is not of rare occurrence that invalidation actions were filed with CNIPA by unrelated third parties.
In accordance with Mainland China’s Patent Examination Guideline, the conclusion of an invalidation action will in principle be published publicly. In general, there are oral proceedings in an invalidation action, and attending oral hearings is conducive to the formation of the examiner's opinion. However, in cases where plagiarism is particularly evident and evidence is clearly sufficient, the petitioner may choose not to attend any oral hearing in order to save costs.
2. Evaluation Report Concerning Patentability
A utility model or design application in Mainland China is not subject to substantive examination as to novelty or inventive step. As long as the formality requirements are fulfilled, the application will mature into a design or utility model patent. Since a utility model or design patent cannot afford presumption of validity, the patent owner will need to request CNIPA to render an evaluation report concerning patentability, so that he can enforce his right against an alleged infringer. Moreover, an interested party, such as a recorded exclusive licensee, a licensee with granted right to sue may, accompanying with evidence attesting to his eligibility, request CNIPA to render an evaluation report.
The draft amendment to the Patent Act Enforcement Rules has relaxed the eligibility of the requestor for evaluation reports to include any entity or individual. If the draft is implemented, it is conceivable that there will also be cases where a request is made by a person for another person.
In practice, an evaluation report requestor is not allowed to submit prior art references for the examiner’s reference in examination. In addition, according to the provisions of Article 57 of the current Enforcement Rules, after an evaluation report is rendered, any entity or individual may request access or copy the relevant files. In other words, the evaluation results will be made public. Given that a patent evaluation report is not an administrative decision, no remedial action can be taken if a report requestor is not satisfied with the content of the report obtained.
3. Third-party Observation
Article 48 of the Enforcement Rules provides legitimate basis for filing a third-party observation, which stipulates that any person may, during the period from the laying-opening date till the grant date of an invention patent (exclusive of utility model or design patents), submit his observation to CNIPA and explain the reasons why the patent application of concern is unpatentable.
There is no official fee for submitting third-party observations. It is allowed to submit such observations in an anonymous manner but this is not necessarily practical in some cases. Prior art references can be submitted to the Examiner for his reference in examination.
Under the current practice, a third-party observation as filed is for the examiner’s information only, and in principle the examiner would not inform the person who submitted a third-party observation whether his opinion has been taken into account or not, nor will CNIPA disclose the content of its opinion to the public. However, it may be inferred from the content of an official letter issued by CNIPA whether the relevant observation has been considered.
4. Reporting to CNIPA
In 2017, CNIPA issued an additional edition of “Several Remarks Regarding Patent Applications” (commonly known as “Publication No. 75”), aimed at preventing “irregular patent applications” from maturing into patents. In March of 2021, CNIPA continued to issue “Measures for Regulating Patent Applications” (commonly known as “Publication No. 411”), which set out the types of irregular patent applications, and the measures that may be taken by CNIPA when it receives a report from a person or find out, on its own, a possible irregular patent application while it is being examined.
According to Publication No. 411, a genuine inventor may, in connection with a patent application suspected of plagiarism or copying, make a name report accompanied by evidence, stating that a specific patent application is possibly plagiarized from his invention. Upon receipt of the report, CNIPA will initiate a special examination procedure and, if the patent application of concern is verified to be irregular, the applicant will be notified to immediately suspend his illegitimate patent filing act. In addition, the applicant should, within a specific time limit, submit a rebutting response or otherwise withdraw the patent application of concern.
5. PSC Patent Search
The Patent Search Center (PSC) may be commissioned by “any person or entity” to conduct prior art searches against a patent application or granted patent regarding its novelty and inventive step. When PSC has located prior art references, its search report will explicitly contain an analytical content similar to that of an examination report rendered by CNIPA. PSC patent search reports are not made public. In addition, in practice, the requestor may submit the relevant evidence for PSC’s reference in conducting a search.
To submit the relevant evidence to PSC and to request PSC to conduct a search is a useful auxiliary tool to prevent a patent application of concern to mature into a patent or to cancel a granted patent. However, note that the search report has no binding on the relevant authorities or court.
The above resources offered by CNIPA undeniably show its conscious determination to defeat plagiarism.
Moreover, according to the aforementioned Publication No. 411, the examiner must proactively dispose of any irregular patent applications located. At the same time, Article 20.1 of the Patent Act, which came into effect in June of this year, also specifies that the “good faith” principle applies to both patent filings and patent right enforcement. What merits further mentioning is that the draft amendment to the Enforcement Rules specifies in a clear-cut manner that “irregular patent applications” may include fabrication, forgery, plagiarism, patchwork or other manifestly improper filings.