Recently, I encountered a case claiming priority. Because I have some vague understanding myself, I asked others what to do in the case of claiming priority. But when I asked for advice, I found that many people who had done cases claiming priority before did not understand what the subject of claiming priority was, that is, what "things" claimed priority. And through the discussion of priority, it is found that many of our agents still have a lot of vague understanding of some basic concepts in patent pragmatism.
In order to let everyone have a clear understanding of these basic concepts and problems in patent practice, to further clarify their vague understanding, and more importantly, to attract the attention and discussion of patent agents, especially those who have just entered the patent agency industry, it is necessary to sort out and analyze these basic concepts and problems.
First of all, from the issue of claiming priority
So what "things" ask for priority when they ask for priority? Or what is the subject claiming priority? Obviously, the subject here is not the subject of the discussant, but what "things" in the application documents claim the priority of what "things" in the previous application documents in the process of claiming priority.
In fact, the answer to this question can be said from at least three levels, that is, why do you ask for priority? What is the priority? And how to claim priority?
First of all, why do you ask for priority?
Basically for patent protection. In other words, whether priority is required is essentially for patent protection.
So what is patent protection for?
Simply speaking, it is the idea of invention, specifically, it is the technical scheme that embodies the essence of the idea of invention. In other words, whether priority is required or not, there is only one purpose of patent protection, and that is the technical solution.
Therefore, from why priority is required, we can basically understand what the subject of priority is. Obviously, this is a technical solution. But the problem is that many agents have a vague understanding of the concept of "technical solution", which we will discuss later.
In fact, the above passage can also be expressed in one sentence: what the right claims to protect is what requires priority protection, and what requires priority protection is what requires priority protection.
Secondly, what is the priority?
At first, there was only the concept of foreign priority, but there was no concept of domestic priority.
Because of the regionality and timeliness of patent right. It is unlikely that an applicant will file a patent application for the same application in different countries or regions at the same time on the same day. In order not to make the application of the same application in one area affect the application in another area, that is, it becomes a conflict application, so the priority system was established for the first time in Article 4 of the Paris Convention for the Protection of Industrial Property. The main clauses are:
(1) Anyone who has formally filed an application for patent, utility model registration, design registration or trademark registration in one country of the Union or his successor shall have priority to file an application in other countries within the following period.
(2) According to the domestic legislation of any country of the Union or the bilateral or multilateral treaties concluded between countries of the Union, any application that is equivalent to a normal national application shall be regarded as giving rise to priority.
(3) A formal national application refers to any application that is sufficient to determine the date of filing an application in the relevant country, regardless of the future outcome of the application.
It is said that domestic priority is set because foreign applicants cannot be given super-national treatment. In other words, the treatment of foreign applicants cannot be higher than that of domestic applicants, that is, domestic applicants do not have to be treated as foreign applicants, but domestic applicants must be treated as foreign applicants. Therefore, a country with equal priority finally evolved into a foreign priority.
However, the essential function of priority is similar to the function of not losing novelty stipulated in Article 24 of the Patent Law. The fundamental purpose is to avoid the conflict between the published invention content of the applicant and the technical scheme requested by the applicant in the subsequent application due to force majeure.
Third, how to claim priority?
As for how to claim priority, it is basically a process problem. As long as you fill in the "claim priority" column in the patent request correctly when you apply. As to whether the priority in the earlier application documents can be claimed, it must be verified by Patent examiners before it can be determined. Specifically, it is to look at the technical scheme required to be protected in the application documents. For example, if there are 10 claims in the application documents, there should be at least 10 technical solutions. If there are multiple technical solutions in a claim, such as three parallel technical solutions, the total number of technical solutions becomes 12. If there are multiple technical schemes for another right, such as four, the total number of technical schemes is 15. By analogy, in short, the total number of rights is obvious and certain, but the total number of technical solutions is not obvious and needs to be determined one by one. The verification of priority is to see whether all the technical solutions in the claim of the application documents can be found in the previous application. If there is such a technical scheme in the claim or specification of the earlier application document, the technical scheme of this application is required to take precedence. Otherwise, there is no priority basis in the previous application, that is, there is no requirement.
For all technical solutions in this application, including multiple parallel technical solutions in the same claim, some may find corresponding technical solutions in the previous application, that is, they have priority basis and require priority success; Some may not find the corresponding technical scheme in the previous application, so there is no basis for priority, and the claim for priority is unsuccessful. In this case, it can be said that priority is partially claimed, that is, not all technical solutions of this application can claim the priority of the earlier application.
For the earlier application, if the technical scheme as the basis of priority is the technical scheme protected by its claims, then after it is the basis of priority, that is, after the latter application claims the priority of the technical scheme, the technical scheme is regarded as abandoned in the earlier application. However, if the technical scheme as the priority basis is only recorded in the specification of the earlier application, but not in its claims, the claims of the earlier application will not be affected, that is, even if the earlier application is the priority basis of the earlier application, its claims will continue to be fully effective.
There is only one situation in which the technical scheme protected by the earlier application claim is considered to be abandoned, that is, the later application claim completely overlaps with the earlier application claim, or the content and quantity of the technical scheme are completely equivalent. In fact, this situation is more common to ask for priority, especially when applying for a foreign patent. For the same application, it is necessary to apply for foreign priority first.
The following is a summary of the practical problems of claiming priority.
1. The subject claiming priority is the technical scheme, not the technical features or technical means in the technical scheme, that is, the smallest unit that can claim priority is and can only be the technical scheme. If there are multiple parallel technical solutions in a claim, some technical solutions can claim the priority of the earlier application, while others cannot. The key depends on whether such a technical scheme is recorded in the previous application.
2, if there are multiple technical solutions in a claim, some require the priority of the earlier application, and some do not; In other words, in the claims, some claims are asserted and some claims are not asserted. These two cases are collectively referred to as the priority of the earlier application. But the more common case of claiming priority is actually all the priority claims of the same application, which is especially common in PCT applications or other forms of overseas applications.
3. A technical scheme may claim the priority of the technical scheme recorded in the earlier application. Compared with the technical scheme recorded in the previous application, this technical scheme is not novel. If there is novelty, the technical scheme recorded in the previous application cannot be used as the priority basis of the technical scheme. That is, the technical solutions that can be used as the basis of priority must be the same or equivalent technical solutions. Specifically, the number of technical features should be equal and the same. Because the technical scheme of 100 must be different from the technical scheme of 99, and it must also be different from the technical scheme of 10 1.
4. The object of the priority claim, that is, the technical scheme recorded in the earlier application, includes not only the technical scheme recorded in the earlier application claim, but also the technical scheme only recorded in the specification, especially the technical scheme corresponding to each specific embodiment, which can be used as the object and basis of the technical scheme applied later.
Second, the analysis and discussion of other issues.
After analyzing the problem of priority, it is necessary to analyze and discuss several basic concepts mentioned at the beginning. Because it can be seen from the priority problem that many problems in practice are basically problems that are unclear about basic concepts or basic logic.
First of all, talk about the relationship between "technical scheme" or "technical scheme" and claims.
Section 6.3, Chapter 2, Part I of the Guide specifies the technical scheme as follows:
The technical scheme mentioned in the third paragraph of Article 2 of the Patent Law refers to the collection of technical means to solve technical problems by using natural laws. Technical means are usually embodied by technical characteristics.
A scheme that does not use technical means to solve technical problems in order to obtain technical effects that conform to the laws of nature does not belong to the object of patent protection for utility models.
The shape of the product, the pattern and color of the surface, or a new scheme combining them, which does not solve the technical problems, does not belong to the object of patent protection for utility models. Words, symbols, charts or their combinations on the surface of products are not the object of patent protection for utility models. For example: a computer or mobile phone keyboard that only changes the characters and symbols on the surface of the keys; A can opener decorated with the shape of the zodiac; Chess and cards, such as ancient poetry poker, are distinguished only by surface pattern design.
It can be seen that the technical scheme mentioned in the Patent Law and the Guide actually has only one concept, that is, the technical scheme mentioned in the third paragraph of Article 2 of the Patent Law, that is, the collection of technical means to solve technical problems by using natural laws. Technical means are usually embodied by technical characteristics.
So what is the relationship between the claim and the technical scheme?
First, the claim is a request for patent protection of an invention idea, which is embodied in one or more technical schemes.
Second, creditor's rights are expressed in the form of creditor's rights, and a creditor's right usually includes at least one creditor's right item. Whether it is a sovereign item or a dependent item, each claim will only include one or more parallel technical solutions. Moreover, if a claim includes multiple technical solutions, the multiple technical solutions must be in a parallel relationship with equal status, and there can be no superordinate or inclusive relationship, and each technical solution should be able to solve the same technical problems targeted by other parallel technical solutions and achieve the same technical effects.
Secondly, let's talk about the relationship between "technical characteristics" or "technical characteristics" and "technical solutions" and "technical means".
As mentioned in Section 6.3 of Chapter 2 of Part I of the Guide, technical scheme refers to the collection of technical means to solve technical problems by using natural laws, and technical means are usually embodied by technical characteristics.
This sentence has clearly pointed out that technical means are expressed through technical features, or the collection of technical features constitutes technical means. The technical scheme is expressed by technical means, or is composed of a collection of technical means.
It can be seen that the most basic element in "technical scheme", "technical means" and "technical characteristics" is technical characteristics. In addition, technical features can be not only physical, but also abstract. For example, they can be represented as a component, a component or even an element, or as a connection relationship, an action relationship or even a combination relationship.
In a claim, no matter how many technical features are written or discovered, these technical features can and can only constitute one or more parallel technical solutions. For example, there are 80 technical features in a sovereignty, so if this sovereignty is a technical scheme, then this technical scheme is a technical scheme with 80 technical features, and each technical feature has a practical restrictive effect on this technical scheme, that is to say, a technical scheme with 80 technical features is definitely different from a technical scheme with 79 technical features removed. Just like a person and another person, although 99.9% of the genes are the same, they are two different people as long as there is a difference of 0. 1%. If this sovereignty includes multiple parallel technical schemes, such as five parallel technical schemes, generally speaking, each of the five parallel technical schemes also has 80 technical features, and the only difference is that one or more of the technical features has an "or" expression, such as the * * component is iron, copper or aluminum alloy.
If 20 technical features continue to be added to a subordinate right, then this subordinate right is a technical scheme consisting of 100 technical features. No matter the right or sovereignty, the logic of the claim itself is the same, and it is to protect an inventive idea, which is embodied in one or more technical solutions. It is particularly important to note here that subordination is not to further restrict the sovereign technical scheme or to add some technical features, so there is more than one technical scheme, or there are above or below besides juxtaposition.
Einstein once said that if I were given an hour to save the earth, I would define the problem in 59 minutes and then solve it in 1 minute. I think the problem defined here probably refers to figuring out the most basic concepts and definitions and the basic logic between them.
There are many problems in patent practice, but if we understand some basic concepts, definitions and logic, the so-called more advanced problems will naturally be solved with the growth of personal experience. Otherwise, if the most basic concepts, definitions and logic are not sorted out clearly, the problem will always be a pot of porridge. Even if professional experience increases with the passage of time, if the basic concepts, definitions and logic are vague, experience may sometimes become a scourge that affects work.