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The Matters for Compliance by Patent Applicants When Submitting Prior Art Information were announced by the National Bureau of Standards (NBS) on 6 November 1998. Key points are outlined below:
Beginning 1 January 1999, applicants for invention or new utility model patents should include in the specification information concerning relevant prior art that would enable persons skilled in the art to understand the content of the patent and to work it.
If the prior art submitted by the applicant refers to national or foreign patent cases on file with the NBS, the applicant should recite the country name, application number, and publication date of the application referred to. Otherwise, the applicant should photocopy said materials and submit them for reference by the NBS. If the prior art materials are publications, the applicant should recite the author, publication name, publisher, and date of publication.
If an applicant fails to report the prior art, the examiners may, if they deem necessary, notify the applicant to submit the information by a designated deadline.
According to the Patent Law, the specifications of a patent application should contain, in addition to other legally stipulated items, the relevant prior art. Failure to do so may subject the patent to opposition proceedings, but it is not listed among the legal grounds for revoking the patent right or instituting a cancellation action.
The NBS announcement fails to clarify how the following kinds of situations would be handled:
If a patent applicant discovers additional relevant prior art after filing his patent application, is he still required to report that information, or perhaps even to amend the description of the relevant prior art in his specification?
It seems that anyone may institute opposition proceedings if a patent applicant fails to provide information on relevant prior art according to law. Once the patent right has been granted, however, may it still be revoked or may a cancellation action be instituted against it on those same grounds?
We will continue to monitor developments in this area and keep our readers up to date.
