For citation of documents in the description, considerations in practice are usually focused on drafting of the background art. However, when it comes to legal issues such as "whether or not contents of the invention are sufficiently disclosed", "whether or not the document can serve as the basis of amendments to the application documents", and "interpretation of the claims in the description", considerations in the cited documents are also important. Moreover, whether the publication languages of the cited documents will affect the subsequent procedures is also a question worth of consideration.
Keywords cited documents
In the process of writing patent application, especially in drafting the description, many applicants would cite other scientific publications or patent documents to describe the background of the invention or to describe specific terms or measuring methods to boiling down the article; in particular, the latter is very common in the chemical and the biological fields. For instance, for a term that is newly emerged in molecular biology and that has not been commonly paraphrased in current dictionaries or textbooks, or for a measuring method of some parameter that is not standardized in the industry, the applicant may describe it by citing scientific documents. Some applicants carrying forward the scientific researchers’ habit of writing scientific papers would leave a long bibliography in the end of the description.
The above-mentioned is called "citation of documents" by the practitioners in the industry. For citation of documents in the description, considerations in practice are usually focused on drafting of the background art. However, when it comes to legal issues such as "whether or not contents of the invention are sufficiently disclosed", "whether or not the document can serve as the basis of amendments to the application documents", and "interpretation of the claims in the description", considerations in the cited documents are also important. Moreover, whether the publication languages of the cited documents will affect the subsequent procedures is also a question worth of consideration.
2. Provisions of Laws and Practice of Examination
2.1 Rule 17 of the Implementing Regulations of the Chinese Patent Law
The relevant provisions of laws regarding "citation of document" are only mentioned in Rule 17 of the Implementing Regulations of the Chinese Patent Law in our patent law system, specifically as follows:
"Rule 17 ... The description shall include the following: ... (2) background art: indicating the background art which can be regarded as useful for the understanding, searching and examination of the invention or utility model, and when possible, citing the documents reflecting such art ... ."
The literal expression of this Rule only involves requirements for drafting of the "background art" of the description.
Regarding this Rule, the Guidelines for Patent Examination provides specific provisions as follows: "This part (the background art in the description of the invention or utility model) shall ..., and when possible, cite the documents reflecting such art, especially the prior art documents which contain the technical features stated in the preamble portion of the independent claim of the invention or utility model, that is, the closest prior art documents. The documents cited in the description may be either patent documents or non-patent literature... Where a patent document is cited, at least the country of origin and the publication number, and preferably the publication date, of the patent document shall be clearly indicated. Where a non-patent document is cited, the title and the detailed source of the document shall be clearly indicated...
Citation of documents shall further comply with the following requirements:
(1) the documents cited shall be publications, either in paper form, or in electronic form;
(2) for non-patent documents and foreign patent documents, the publication date shall be earlier than the filing date of the application; for Chinese patent documents, the publication date shall be no later than the publication date of the application; and
(3) where the cited document is a foreign patent or non-patent document, the source and relevant information of the cited document shall be indicated in the original language as used for its publication. If necessary, Chinese translation thereof shall be provided, and put in parentheses.
If the citation of a document satisfies the above requirements, the description of the application shall be regarded as having set forth the contents of the document." (1)
Most of the contents in the above regulations are easy to understand. For example, when citing a patent document and a non-patent document, the document number shall be clearly provided for guidance, so that the public can access the corresponding document. In fact, the World Intellectual Property Organization (WIPO) has recommended a standard for citation of documents in patent application documents, and this standard is basically consistent with the standard for scientific researchers to list the bibliography when writing scientific papers. (2)
In the above provisions, however, requirements for the publication dates of "non-patent documents and foreign patent documents" and of "Chinese patent documents" are different, that is, "for non-patent documents and foreign patent documents, the publication date shall be earlier than the filing date of the application; for Chinese patent documents, the publication date shall be no later than the publication date of the application". Here, whether it is a foreign patent document, a Chinese patent document, or a non-patent document, if its publication date is earlier than the filing date of the present application, that is, it belongs to the prior art, this document can be, without a doubt, cited and described in the background art of the description, or be described in other parts of the description. Nonetheless, for a Chinese patent document, the above provisions provide an exception, that is, it is feasible as long as the publication date is not later than the publication date of the application. Regarding this provision that is different for a Chinese document and a foreign document, some explain it from the perspective of "national treatment", while others believe that the reason in practice may be that, , the examiner cannot determine the contents disclosed in the patent that has been filed in foreign countries but hasn't been published yet then, and believe that with the closer cooperation among the patent authorities of various countries, this problem may be easier to overcome later. (3)
In fact, there are similar provisions in the Guidelines for Examination in the European Patent Office, but they are related to cross-referenced documents, and they also stipulate that "the date of such documents being publicly available shall not be later than the publication date of the application" (4). However, due to differences of the European system, the "publicly available" here is more of available in archives (electronic archives) of the application.
In addition, if a foreign patent document has a Chinese patent application of the same family, and the publication date of this Chinese family application complies with the provision of the above item (2), can it also be regarded that the contents of the cited foreign patent document have been disclosed in the description? It seems that the same recognition can be given referring to the provision of the above item (2) whether it’s for the reason of the so-called "national treatment" or the difficulty of obtaining the contents of a foreign patent document in practice; and of course, it is also necessary to compare the consistency of the corresponding technical contents in the Chinese family application and the foreign patent document. Meaningful discussion has been made in this regard: "for a Chinese patent application citing a foreign patent application as the cited document, if the foreign patent application has a Chinese patent application of the same family with the corresponding contents, and the publication date of the Chinese family application is earlier than the publication date of the present application, it is deemed that the Chinese patent application cited the Chinese patent application of the same family, and the technical contents disclosed in the Chinese patent application of the same family can be considered as part of the description of the present application". (3)
The above provisions in the Guidelines for Patent Examination made requirements for the form of citation of documents, and for determination of specific technical contents, it is necessary to combine the description and the cited contents of the present application and treat them as a whole. Generally speaking, a cited document that is only roughly described in the background art and lacks combination with contents of the invention of the present invention can only be used as the background art. However, if a document reflecting the background art is cited in the background art of the description, this document constitutes the prior art in content; by way of citation, such content becomes a constituent part of the technical solution involved in the description, and the content of the document shall be regarded as has been disclosed in the description (5). In Judgment (2015) MIN SHEN ZI No.188 of the Supreme People's Court, the court deems that "... In the present case, the earlier patent application cited the cited patent twice in the description. The cited patent is first disclosed in the background art of the description: ... And the cited patent is then disclosed in the detailed embodiments of the description: ... In the present case, the date of announcement of grant of the cited patent is earlier than the filing date of the present patent, and constitutes the prior art of the present patent..." (5). If, in the present case, the cited patent document only appears in the background art, and is not specifically described in the detailed embodiments with contents of the invention, then the direction of the present case is not known yet.
2.2 Article 26.3 of the Chinese Patent Law
Besides requirements for the form of citation of documents, whether the patent application citing the documents achieves the purpose of sufficiently disclosing the invention or the utility model needs to be determined in accordance with the relevant provision of Article 26.3 of the Patent Law.
In this regard, the Guidelines for Patent Examination provides the following provisions: "It should be noted that, for the convenience of examination and straightforward understanding of the invention or utility model by the public, those contents which are indispensable for the description to comply with the requirement of Article 26.3 cannot be described by only reference to other documents, but shall be substantially described in the description" (1).
However, in practice, it is difficult for applicants who lack patent knowledge to determine what "contents which are indispensable for the description to comply with the requirement of Article 26.3" are. For foreign applicants, due to differences in the legal system, it is difficult to accurately understand the specific requirements of "sufficiency of disclosure" or "enablement requirement" in practice of our country. Thus, the above provisions in the Guidelines for Patent Examination cannot be enforced mechanically. For instance, when it is necessary to measure a specific parameter, if the measuring method has not become a standard method in the industry, or the parameter and measuring method are defined by the applicant himself/herself, it seems unnecessary to copy the specific steps in the description, instead, the applicant may be allowed to cite certain documents to elaborate the parameter and the measuring method, provided, of course, that the citation is clear and exclusive. Here the author believes that the interpretation that "if the cited contents are indispensable for implementing the invention, the cited contents and the description shall be combined and treated as a whole" (6) in the Examination Operation Regulations seems to be more agreeable to the applicant.
2.3 Article 33 of the Chinese Patent Law
As for citation of documents in amendments of the application documents, it usually involves the amendment to the background art of the description, or the amendment to the technical solution in contents of the invention.
With respect to the former, i.e., the amendment to the "background art", according to the Guidelines for Patent Examination, if the examiner retrieves through the search a reference document that is closer than the prior art cited by the applicant in the original description, the applicant is allowed to amend the description, add contents of this document to the background art, and cite the document. Besides, it should be pointed out that such amendment actually adds to the description contents that have not been disclosed in the claims and description of the original application. However, since the amendment only involves the background art but not the invention itself and the added contents are the prior art commonly known before the filing date, such amendment is allowed.
From the literal expression of the Guidelines for Patent Examination, what is involved here is only the amendment to the "prior art", and the above-mentioned situation that "for Chinese patent documents, the publication date shall be no later than the publication date of the application" is not involved, since the latter does not belong to the prior art. However, the practice of the European Patent Office is different, in which in addition to supplementation of the prior art, conflicting applications and "cross-referenced" documents can also be supplemented.
The above-mentioned amendment to the background art is generally understood as not affecting the invention itself, but if the amendment to the technical solution in contents of the invention is involved, the judgment standard would be much stricter. For instance, according to the Examination Operation Regulations, if contents of the cited document in the application are indispensable for the implementation of the invention, the applicant is allowed to add specific contents of the cited document only when the applicant can clearly direct to the contents of the cited document, such as clearly specifying information of the specific cited document and its specific paragraphs and the like, and the added contents of the cited document are exclusively and doubtlessly related to the relevant contents of the present invention (6). Further referring to the above-mentioned legal precedent of the Supreme People's Court, when it is clearly recognized that the relevant contents of the cited document have become a constituent part of the technical solution involved in the description, it shall be regarded that the contents of this document have been disclosed in the description, and amendments made under this premise do not violate the provision of Article 33 of the Patent Law. In this case, of course, whether it is necessary to amend contents of invention is depending on the specific circumstances of the case.
Furthermore, cases of amending the best mode for carrying out the invention or embodiment may also be involved. According to the Guidelines for Patent Examination, such amendment is generally limited to the addition of the source of the specific contents of the initial mode or embodiment and the standard measuring method of the described data reflecting the advantageous effects of the invention (including the standard equipment and/or appliance to be used) (1). Especially for the data measuring method, sometimes due to complexity of the method, the applicant may cite the prior art to briefly describe the method. However, under the premise that the citation is clear and definite, the applicant shall also be allowed to supplement and complete such method based on the cited document, which is also beneficial for eliminating the hidden issue of "insufficient disclosure".
3. Issues related to the publication language
Another issue related to citation of documents is the language. In accordance with the principle of publication for protection of patent right, the publication language and its corresponding force of law will be involved. Due to the regional characteristics of patent and the nature of judicial sovereignty, the public language of a document that has force of law in our country must be Chinese. If there are cited documents in the patent application documents, and the publication languages of these cited documents are different, it is a problem that how to solve the language issue of these cited documents when determining the scope of the claims after the subsequent publication and grant of the patent applications.
For example, a scientific article in foreign language or a patent document in foreign language is cited in an application document to describe or even define a term newly emerged in the science and technology field, while the applicant only provides the exact document number, but does not describe or define the new term using Chinese in the description. In this case, after the subsequent publication and even grant, when interpreting the claims with the description in accordance with the provision of Article 59 of the Patent Law, will the language of the foreign document cited in the description be considered?
Similar to the legal provision of "temporary protection", with regard to, for example, a PCT international application, if the PCT application has designated China and the international filing date has been determined, it is deemed that the formal patent application has been filed with the Chinese Patent Office according to our legal provisions. Nevertheless, the force of "temporary protection" will be granted only after the national publication in Chinese of the PCT application is completed, not after the international publication in the international phase of the PCT application, and one exception is that the international publication language of the PCT application is Chinese.
With reference to these provisions, when the "internal evidence priority principle" is applied to interpret the claims in the afore-mentioned circumstances, do the foreign documents cited in the description have force of law? Theoretically, these cited documents are not published in Chinese, but are only cited in the description in the form of document numbers.
Certainly, the above doubts appear to be too harsh. Under the circumstances of publication for protection, no matter it is the protection after grant or the temporary protection after publication, it is the act of publication that is considered. After the Chinese document has been published, the force of law of the patent application document is established. The language issue in the application document per se can be subsequently solved by providing a Chinese translation recognized by both parties when necessary, and it is unnecessary to be overcritical to the applicant. In any case, in order to avoid unnecessary subsequent risks, in drafting the patent application document, contents related to the essence of the invention, such as "those contents which are indispensable for the description to comply with the requirement of Article 26.3" stated in the Guidelines for Patent Examination, and contents that might affect the protection scope of the claims, shall be incorporated into the description as much as possible, without overly focusing on the boiling down the description. The reason is that it is self-evident which one is more important, length of the application document, or stability of the rights.
1. Guidelines for Patent Examination (2010), first edition, January 2010, Intellectual Property Publishing House
2. STANDARD ST.14, HANDBOOK ON INDUSTRIAL PROPERTY INFORMATION AND DOCUMENTATION, May 2016, WIPO
3. "Brief Introduction to Citation of Documents", LI Weixiang, ZHANG Wenhui, Patent Agency, Issue 1, 2018
4. Part H-Chapter IV-2, Guidelines for Examination in the European Patent Office, Nov 2018, EPO
5. Guidance on Intellectual Property Cases of the Supreme People's Court (the 8th volume), June 2016, China Legal Publishing House
6. Examination Operation Regulations, first edition, January 2009, Intellectual Property Publishing House