Do you understand public opinion on patents?

Public opinion refers to a review system that allows anyone in the society to object to the patent application within the legal time limit after the patent application is published. It is a way to prevent the authorization of the target patent before it is authorized.

Public opinion related laws

Regulations for the Implementation of the Patent Law (2023 Revision)Article 54The ruleFixed:From the date of publication of the application for a patent for invention to the date of announcement of the grant of the patent right, any person may submit an opinion on the patent application that does not comply with the provisions of the Patent Law to the patent administration department under the State Council, together with the reasons.

Guidelines for Patent Examination (2023 revised version) Part II, Chapter 8, Section 4.9 states:Any person's opinion to the Patent Office on an application for a patent for invention that does not comply with the provisions of the Patent Law shall be deposited in the application document for the examiner to make.Substantive reviewwhen considered. If the public comment is received after the examiner gives notice of the grant of the patent, it need not be considered. The handling of public comments by the Patent Office is not required to notify the public who made the comments.

Significance of public opinion

Through this kind of objection examination, the Patent Office extensively solicits the public's evaluation of the patent application, helps the examiner to understand the patent content more comprehensively, helps to find problems in time, improve the examination efficiency, and make the authorization decision correctly, so as to reduce the disputes after the patent authorization. Public opinion on patents is therefore also very useful for public scrutiny.

Reasons for public comments

Although the Patent Examination Guidelines stipulate that anyone can make public comments, it is generally the stakeholders who make public comments. The reason why it is necessary to provide public opinions on patent applications that cannot be authorized by themselves is that stakeholders, as people in the industry, generally know more about which technologies are existing or common in the industry, and even if the examiner has Relevant background and education, but after all, not people in the industry, it is entirely possible that they do not know that the technology is common, moreover, the evidence that the general examiner can retrieve is mostly patents or published articles, and may not be able to retrieve other types of evidence affecting innovation that can only be accessed by people in subdivided industries, and the patent is likely to be authorized. After the patent is granted, the interested party can certainly file a patent invalidation request for the patent that has been granted. However, the patent invalidation procedure involves a multi-level procedure, which requires a lot of time, energy and money.Submission of public commentsNoneRequired to pay any official fees, the procedure is also very simple, mail or face to facePatent Office of the State Intellectual Property OfficeThat is, and it is more difficult for a patent to be invalidated after substantive examination than to intervene in the authorization of a patent application by filing a public opinion in the early stage; in addition, invalidation of a patent may cause a positive conflict between the two parties, but public opinion is like one."Dark arrow", relatively hidden some. Therefore, if a company believes that a patent application may constitute an obstacle to the implementation of its own product or technology in the early daily monitoring or project process, it can take early action to intervene, hinder its authorization or force it to limit the scope of protection.

Timing of public comments

According to the regulations, public opinions can be submitted from the date of publication of the patent application to the date of the notice of grant of patent right issued by the examiner. However, for the first public opinion submitted before the first review opinion is issued, the probability of reference by the examiner is higher. If the examiner has already issued the review opinion and then submitted the public opinion, and the comparison document is not very convincing, then it will be difficult to change the examiner's original review thinking.

Public Opinion Writing Strategy:

1Before submitting public opinions, it is necessary to analyze the target patent application documents in detail to see if there is any substantive content in the specification that is not included in the claims but has creativity. If not, you can submit it with confidence. If so, you need to consider it carefully. Otherwise, it may become to help others modify the claims to make their patent rights more stable, which will make it more difficult to file a patent invalidation request in the future.

2In order to maximize the effective public opinion, if the patent application has a foreign patent of the same family, it is necessary to pay attention to the examination progress of the foreign patent of the same family, including the legal status abroad, the examination process, the examination opinions of the foreign examiner and the relevant documents submitted by the applicant.

3Usually, the closest comparison document quoted by the examiner in the notice of the first examination opinion will not be easily replaced, so if the public opinion is submitted after that, try to make supplementary search and discussion on the amendment of the patent applicant's claim.

4After the first public opinion is put forward, regardless of whether the examiner quotes relevant content in the examination opinion, the target patent may make a claim amendment to reply to the examination opinion. At this time, the public opinion should be monitored, and the attitude of the examiner and the possible modification of the target patent should be judged by analyzing the examination opinions, so as to decide whether to submit the public opinion multiple times with additional evidence.

Form of content for submission of public comments

The requester may submit it in the form of an invalid request or in the form of a statement of opinions, preferably with a comparative document, and if there is a foreign language, the quoted part may be translated and attached to the corresponding document. Pay attention to the need to list the patent information (application number, applicant, invention name, etc.) and attachment information of the target patent application in the opinion statement, and make clear which comparative documents are used for public opinions on which patent.