AFD China Case Study - Change of Bibliographic Data after Deemed Withdrawal of a Patent Application
Usually, after a patent application is deemed as withdrawn, the applicant will take no further action, because giving up the prosecution is a deliberate choice that the applicant makes based on the evaluation on patentability, technology development, business strategy, budget or other factors.
In most cases, it won’t be a matter whose name is written on the withdrawn patent application as the right is invalid and not restorable. However, in some cases, the withdrawn patent application will be used as the priority for the applicant or his successor in title to file application(s) in another country for the same invention with an effective date of filing as early as that of the withdrawn patent application. In the situation, the name which is officially recorded at the Patent Office does matter. Only where that of the withdrawn patent application is identical to that of the subsequent foreign applications, successfully be claimed the priority and so did the filing of the subsequent applications.
The State Intellectual Property Office of China (SIPO) does not have specific rules whether change of bibliographic data after a case being deemed withdrawn can be made or not. It normally takes a stance as cautious and strict as possible on such an issue and does not approve so. In a recent case, we found that it is not that unchallengeable.
The patent application being briefed was used to establish priority application. After receiving the application number from the SIPO, the applicant did not pay the application and publication fees and let go of the case. The patent application then went deemed withdrawn. This patent application was later assigned, as a part of the assignment portfolio, from the applicant to another company which planned to use it to be the basis for subsequent patent filings in foreign countries. The assignee company then submitted a request to record itself as the applicant of the case with the SIPO. The examiner rejected the request with a Notification of Request Deemed not Made with the ground that “[t]he application is not in force, thus [the SIPO will] not process the change of bibliographic data”. As mentioned above, if the assigned company were not the recorded applicant, the subsequent foreign applications which would claim priority of this application could not pass the formality check due to the inconsistency of the name of the applicants.
The assignee company did not satisfy with this result. It took our advice to file a request for administrative review to the SIPO with the argument that the issuance of the Notification of Request Deemed not Made lacks legal grounds. The right to file and prosecute a patent application exists regardless of the legal status of the patent application; it is objective and should not be deprivated. If the bibliographic data were not updated to reflect the name of the assignee company, whose right to file subsequent foreign applications, particularly, the right to priority claiming, could not be executed.
We further argued that regardless of whether a patent application will serve as priority for subsequent patent applications, it is necessary to record the assignment of the patent application. Because it is what actually happens and should not be blocked merely by formality/procedural conduction. If the SIPO did not approve such recordal, not only the interests of the assigner and the assignee would be affected but also the public would be misled since information available for them was not correct. For patent applications which are not in force, applicants still enjoys some rights in relation to the patent application, such as the right to claim priority of it, the right to request to obtain a certified copy of it, the right to request to obtain the file history of it and so on. Therefore, it makes sense to record bibliographic changes with the SIPO for a patent application which is not in force. The legal status of the patent application/patent should not be an obstacle to prevent the applicant from executing such rights. Otherwise, it would give rise to unfair restriction and damage to the execution of right of a legitimate right owner.
Our opinions were eventually supported by the SIPO. The Notification of Request Deemed not Made was reversed after the administrative review, which held that the Notification lacks legal basis, since no provision in the Patent Law, Implementing Regulations on the Patent Law and Guideline for Patent Examination stipulates that examiners should reject a request for recording change(s) of bibliography data where a patent application or patent is not in force. Although in common situation, it loses significance to record bibliography data change of a patent application/patent since it is not in force. But this case was quite different because whether the assignment is recorded or not would substantially affect the assignee company’s right. In order to ensure the assignee company’s right to file subsequent foreign applications and claim the present application as a priority, it is necessary to update the bibliographic information to keep it up with the actual right owner, i.e. the assignee company.