With the development of China's economy, the areas in which domestic enterprises participate in competition continue to expand and the intensity becomes increasingly fierce. They also gradually realize the importance of intellectual property protection for the survival and development of enterprises. More and more enterprises We are actively applying for patents at home and abroad. During this process, some people inevitably have such confusion: To what extent will the patents we apply for be protected? If the company discloses the technology, but does not have enough manpower and material resources to supervise the market, will the patents we apply for be just a piece of paper?
Such worries are not unfounded. Since China is in the initial stage of patent protection, although the relevant laws and regulations have been basically sound, judicial practice in a short period of time is not enough to make the whole society realize the huge risks of infringement and the heavy costs that will result. Create a good atmosphere of respect for intellectual property rights within the scope. Under such circumstances, it seems normal for people to worry about irregular market behavior. Here, the author briefly discusses some opinions on the issue of retaining technical secrets in patent applications.
The significance of retaining technical secrets
Objectively speaking, when feasible, it is necessary to retain appropriate technical secrets when applying for an invention patent. As long as appropriate measures are taken, retaining technical secrets to a certain extent can greatly reduce the cost of rights protection for enterprises, so that applicants can obtain certain rights protection without having to bear heavy psychological and economic burdens by exposing certain technical details to the world. burden. In some fields, notably chemistry and biology, this approach is particularly important. Because for products in these fields, it is not easy to determine whether a product is an infringing product, and market supervision by the applicant is bound to be expensive. An example of a patent that successfully retains technical secrets is a patent on an oxime ether compound herbicide issued by Soda Co., Ltd. of Japan. The herbicide using this compound as the active ingredient is sold in China under the trade name Sethoxydim, also known as Napol. net. The patent's protection period expired in 2002. In the specification of this patent, there is no detailed disclosure of the preparation method of a high-purity preparation of this compound. Due to its successful technology retention, although the protection period of the patent has expired for 6 years, it still monopolizes the Chinese market. Between 1999 and 2004, many domestic institutions and companies tried to develop localized processes, but they all ended in failure. Therefore, applicants should take some reservations as much as possible when applying for a patent.
Risks of retaining technical secrets
However, applicants must be aware when retaining technology that retaining technical secrets is a double-edged sword. If not handled properly, it will bring consequences to the applicant. Loss, even if you invest the energy and expense in applying for a patent, you will not be able to obtain the corresponding rights.
First of all, inappropriate technical reservations will cause the application to fail to pass the substantive examination of the invention application due to insufficient disclosure. Substantive examination is a necessary procedure for the authorization of invention patent applications. It is within 3 years from the filing date (the priority date if there is priority). Upon the applicant’s request, the Patent Office examination department shall conduct an examination of the invention in accordance with the provisions of the Chinese Patent Law. A patent certificate will be issued only after passing the review. Paragraph 3 of Article 26 of the Patent Law stipulates: The description shall provide a clear and complete description of the invention or utility model, which shall be subject to the ability of a skilled person in the relevant field to realize it. That is to say, the technical disclosure in the specification must be sufficient to enable those skilled in the art to achieve the purpose of the invention claimed by the applicant, reproduce the test results given therein, and achieve the technical effects claimed in the specification after reading the specification. This is the issue of sufficient disclosure in patent applications.
During the substantive examination process, if the examiner has reasonable grounds to question that the specification does not meet the requirements for sufficient disclosure, the applicant will be asked to provide clarification. If the applicant does not have enough evidence to convince the examiner, the application will be rejected due to insufficient disclosure and cannot be authorized.
When the content to be retained can be retained, it is necessary to carefully design the technical solution required for protection, selectively disclose experimental data, properly explain the purpose of the invention, and objectively claim the corresponding technical effects. It is necessary not only to ensure that the disclosed technical solution is actually feasible, but also to make the technical solution as novel, creative and practical as possible compared to the existing technology (this is necessary for authorization). At the same time, the experimental data provided in the specification need to be sufficient to support the scope of the claims. In this case, the preparation of application documents is often not accomplished overnight, and sometimes further tests need to be conducted based on the scope of the claims and the claimed purpose of the invention to supplement the required test data. It is emphasized here that the process parameters disclosed by the applicant in the specific implementation section should be consistent with the test result data. Sometimes, in order to submit the application as soon as possible, the applicant often does not have enough patience to supplement the test and compile some data directly. This approach is very risky, because if others are unable to repeat the data in the future, thereby failing to achieve the claimed technical effect and unable to achieve the purpose of the invention, the specification may not be fully disclosed or the technical solution is not practical or the claims are lacking. The specification supports the request for invalidation of the patent right.
Conclusion
The above has roughly stated some of my views and experiences on the issue of retaining technical secrets in invention patent applications. Of course, how to write an excellent application document cannot be comprehensive in a short article. There are many legal issues and technical issues that need to be considered. It is necessary to clearly disclose the technical solution and strive for the widest possible scope of protection. , this requires the writer to have a thorough understanding of the technical solution and be able to analyze it from both technical and legal aspects to a certain height, so as to achieve beneficial expansion of the specific technical solution. Moreover, the application documents should be understood as a whole, and the application documents should not be left with flaws or even serious flaws due to the retention of technical secrets. Therefore, when preparing application documents that require the retention of technical secrets, the applicant should entrust a patent agency to handle the application matters. In addition, the applicant and the agent need to work together to supplement the necessary test data when necessary to ensure the quality of the application documents and avoid leaving hidden dangers to the stability of future rights.