Such worries are not groundless. Because China is in the primary stage of patent protection, although the relevant laws and regulations are basically sound, the judicial practice in a short period of time is not enough to make the whole society realize the great risk of infringement and the heavy price it will cause, and has not yet formed a good atmosphere of respecting intellectual property rights in the whole society. In this case, people are worried that irregular market behavior seems normal. Here, the author talks about some views on the retention of technical secrets in patent applications.
Significance of keeping technical secrets
Objectively speaking, if feasible, when applying for an invention patent, it is necessary to keep appropriate technical secrets. As long as appropriate measures are taken to keep technical secrets to a certain extent, the cost of enterprise's rights protection can be greatly reduced, and the applicant can obtain certain rights protection without having to bear heavy psychological and economic burden because some technical details are made public. This measure is especially important in some fields, especially in chemistry and biology. Because it is not easy to judge whether a product is an infringing product for products in these fields, it is bound to be costly for applicants to conduct market supervision. An example of a patent that successfully kept the technical secret is a patent of an oxime ether compound herbicide by Japanese Caotian Co., Ltd. The trade name of the herbicide with this compound as the active ingredient in China is Xihe Ding, also known as Naqiujing. The protection period of this patent expired in 2002. In the specification of this patent, the preparation method of high-purity preparation of this compound is not disclosed in detail. Because of its successful technical retention, the patent has monopolized the China market, although its protection period has passed 6 years. During the period from 1999 to 2004, many domestic institutions and enterprises tried to develop their domestic technology, but all failed. Therefore, the applicant should take some reserved measures as far as possible when applying for a patent.
The risk of keeping technical secrets
However, the applicant must realize that the retention of technical secrets is a double-edged sword. If it is not handled properly, it will bring losses to the applicant, and even the energy and cost of applying for a patent will not be obtained.
First of all, improper technical reservation will make the application unable to pass the substantive examination of the invention application because of insufficient publicity. Substantive examination is a necessary procedure for the authorization of invention patent application. The procedure for the examination department of the patent office to examine whether the invention meets the authorization conditions according to the provisions of China's patent law within 3 years from the date of application (priority date means priority date), and to issue a patent certificate only after passing the examination. Paragraph 3 of Article 26 of the Patent Law stipulates that the description shall give a clear and complete description of the invention or utility model, subject to the realization of the technical personnel in the field. That is to say, the technical disclosure of the instruction manual should be enough to enable the technicians in this field to realize the claimed invention purpose after reading the instruction manual, reproduce the test results given therein, and achieve the technical effect required to be protected in the instruction manual. This is the problem that is fully disclosed in the patent application.
In the process of substantive examination, if the examiner has reasonable reasons to question that the instructions do not meet the requirements of full disclosure, he will ask the applicant to clarify. If the applicant does not have enough evidence to convince the examiner, it will lead to the application being rejected and not authorized because of insufficient publicity. It should be emphasized that since all the invention applications have been made public when they enter the stage of substantive examination, the applicant may not apply for a patent again for the contents that have been made public, and almost all patent applications have passed the one-year deadline when they receive the first notice of substantive examination, so they cannot apply separately on the basis of this application. In this way, once the patent application is rejected due to insufficient disclosure, the technology disclosed by the applicant is only provided to the public free of charge, and no return can be obtained.
Secondly, the third paragraph of Article 26 of the Patent Law is also invalid. In many cases, even if the technical secrets are improperly kept in the specification, the examiner may directly grant the patent right without knowing it. However, in the future, the public (often competitors) can make an invalid request to the Patent Reexamination Board of the State Intellectual Property Office according to the above provisions. At this point, if the specification does have defects that can not achieve the purpose of the invention because of retaining technical secrets, the reexamination board will make a decision that the patent right is invalid, which will lead to the invalidation of the patent right. For an invalid patent, it is deemed that the patent right does not exist from the beginning. For example, the domestic applicant applied for the invention of a bamboo fiber production method, and the claim mentioned the use of a treatment agent, but neither the claim nor the specification disclosed what the treatment agent was. According to the disclosure in the specification, not all existing treatment agents can be used in this method. The patent was found invalid by others in 2005 and was declared invalid by the reexamination board. Later, the case was brought to Beijing No.1 Intermediate People's Court and Beijing Higher People's Court, and the court finally upheld the decision of the review committee. Therefore, even if the patent application is granted a patent right, it may lose its rights in the invalid procedure. As applicants, we should take this as a warning to avoid similar situations as much as possible.
In addition, the technical secrets mastered by the applicant may become well-known public technologies or become patents of others. Due to the flow of personnel or the improper behavior of competitors, enterprises may cause the leakage of retained technical secrets, making them a part of well-known public technology. At this time, although the infringer's illegal behavior can be investigated according to the Anti-Unfair Competition Law, the public can freely use the technology that enters the well-known field, and the enterprise is not binding on it. Another possibility is that others discovered the technical know-how through the study of the prior patented technology and applied for a patent for its improvement, so the right of the prior applicant to use the improved technology will also be restricted.
Therefore, when applying for an invention patent, the applicant must weigh the advantages and disadvantages and fully grasp whether to keep technical secrets.
Strategies for keeping technical secrets
When applying for a patent with confidential contents, the applicant must first find out whether these technologies are suitable for preservation. This can be considered from the following aspects. First, the reserved objects should be limited to the content that is not easy to be found or noticed. For some key but easy-to-explore content, or content that is obviously important to the exploration direction, it is best not to treat it as a technical secret, because once the technology is mastered by others, it is likely to put itself at a disadvantage. It is best to keep the technical content very detailed, not the main content of the technical scheme. For example, for the composition of a certain component, the proportion of each component is undoubtedly the focus of technicians' exploration, so this technology is usually difficult to cover up. If there is an auxiliary ingredient that can promote the performance of the composition, and the object of the invention can be basically achieved without this ingredient, it is preferable to keep the auxiliary ingredient confidential. For another example, for a chemical method patent with many technical parameters (such as temperature, time, pressure, and material ratio), when the invention purpose can be basically realized in a wide open range, a specific combination with the best effect of these parameters can be kept secret, because finding the best combination from these numerous combination schemes often requires a lot of labor from others. In short, the reserved content is not easy to be found or unexpected. Second, consider it according to the difficulty of safeguarding rights. For some technologies that are difficult to protect rights, we should try to make some technical reservations. For example, chemical and biological products that are difficult to analyze comprehensively, and some production methods. For these technologies, the applicant proves that infringement is often time-consuming and labor-intensive, and the cost of safeguarding rights is high. If appropriate preservation measures are taken, the infringement can be dismissed. For some products that are easy to distinguish, especially tangible products, we can keep technical secrets less or not at all. Third, we must grasp the degree of technology retention. Generally speaking, the reserved technology should not account for a large proportion in the overall technology, otherwise it will leave a lot of room for development for competitors. If the technology involved in the application has great commercial value, it will undoubtedly guide the development of competitors. If the technology is controlled within a small scope, even if others master the technology in the future, they will give up the idea of applying for a patent because the scope is too small. In this way, the retained technology will always be in your own control. On the other hand, patents with too many contents may have lost their meaning of existence.
It is worth noting that the applicant should guarantee the integrity of the disclosed technical scheme while having reservations. The completeness mentioned here means that the specification should include all the contents needed to achieve the purpose of the invention, that is, to disclose all the necessary technical features. In other words, even without these reserved technologies, the purpose of the invention can be achieved, although the best effect can not be achieved. If the invention cannot be implemented without the reserved technology, then such technology should not be retained, otherwise such an application will not be authorized, and even if it is authorized, such rights are meaningless to the applicant himself.
In addition, the applicant is required to have a clear understanding of the status of the existing technology to ensure that the disclosed technical scheme is novel and creative relative to the existing technology ... Sometimes, due to improper reservation by the applicant, the examiner finds that the technical scheme disclosed in the application is not novel or creative compared with the comparison document and does not meet the authorization conditions. At this time, the applicant cannot obtain authorization by adding reserved content, which will lead to the failure of patent application.
The applicant should also explain the purpose of the invention, the technical problems to be solved and the technical effects achieved based on the published contents, without mentioning the purpose of the invention, the technical problems that can be solved and the better technical effects achieved by the technology in the specification, not to mention the technical effects that need to be retained as the effects that can be achieved by the invention. Because of the requirements of the patent law, once the invention purpose and technical effect of the technical scheme in the claim are mentioned, it should be realized according to the contents of the specification, otherwise the examiner can reject the application on the grounds of insufficient disclosure or the claim lacks the support of the specification. Sometimes, you can pass the audit by deleting the corresponding claims or reasonable opinions, but this is not always effective. Take the herbicide patent mentioned earlier, the patentee's herbicide product can actually reach more than 90% of the active ingredient content, and its domestic institutions have not been able to copy such a high-content product, so the herbicide has not been localized so far. However, this does not mean that the patent is not fully disclosed. Because it is only necessary to protect the compound, the high-purity synthesis method of the compound is not included in the protection scope, and the description does not mention that the invention aims to provide a production method of high-content chlorhexidine active ingredients. For such an application document, as long as the people in the field can synthesize the active ingredients according to the instructions, even if it is obtained through a complicated purification process, it has no commercial value. This kind of application document is qualified, because the scope of the claim is consistent with the content disclosed.
Therefore, when there is a need for technical reservation, the applicant should fully communicate with the patent agent and carefully prepare the application documents. At least the agent should be informed which technologies he wants to keep secret, so that the agent can help analyze the possible risks caused by technology reservation, determine whether it is appropriate to keep these contents, the degree of reservation and the writing strategy of application documents, so as to prevent the agent from unwittingly writing application documents that do not meet the authorization conditions, or have other adverse consequences for the applicant. When the content to be preserved can be preserved, the technical scheme to be protected should be carefully designed, the experimental data should be selectively disclosed, the purpose of the invention should be properly explained, and the corresponding technical effect should be objectively advocated. It is necessary to ensure the feasibility of the disclosed technical scheme and make it as novel, creative and practical as possible compared with the existing technology (this is necessary for authorization). At the same time, the experimental data provided in the specification should be sufficient to support the scope of the claims. In this case, the preparation of application documents is often not done overnight, and sometimes further tests are needed according to the scope of the claim and the claimed invention purpose to supplement the required test data. It should be emphasized here that the process parameters disclosed by the applicant in the specific embodiment should be consistent with the test results. Sometimes, in order to submit an application as soon as possible, applicants often don't have enough patience to supplement the experiment and sort out some data directly. There is a great risk in this way, because if others can't repeat these data in the future, so that they can't achieve the claimed technical effect and invention purpose, they can request the invalidation of the patent right on the grounds that the specification is not fully disclosed or the technical scheme is not practical or the claim lacks the support of the specification.
Concluding remarks
Above, I have roughly expounded some views and experiences on keeping technical secrets in the application for patent for invention. Of course, how to write an excellent application document is not an essay, and there are many legal and technical issues to consider. In order to clearly disclose the technical scheme and strive for the widest possible protection scope, this requires the author to analyze it from both technical and legal aspects after thoroughly understanding the technical scheme, so as to realize the favorable development of the specific technical scheme. Moreover, the application documents should be grasped as a whole, and the application documents should not be flawed or even seriously flawed because of retaining technical secrets. Therefore, when preparing the application documents that need to keep technical secrets, the applicant shall entrust a patent agency to handle the application affairs. In addition, the applicant and the agent need to work together to supplement the necessary test data when necessary, so as to ensure the quality of the application documents and avoid leaving hidden dangers for the future stability of rights protection.