The China Syndrome: How recent developments in Chinese patents affect U.S. applicants

Chinese patents and patent applications are citable as prior art in most Western countries if they meet the usual criteria regarding publication dates of the cited patent and filing or priority dates of the examined patent. They always have been. However, recent developments have made them more problematic for Western country applicants, especially for independent inventors and small businesses.

I haven’t seen a similar trend with US examiners yet, but Canadian examiners are starting to cite Chinese documents as prior art more often. A searcher I use is also looking at Chinese documents when doing prior art searches and he often finds very relevant Chinese documents in his search results. This increase in relevance of Chinese patents and applications to prior art comes from 3 main factors. First, a lot of Chinese patent applications are now filed each year. Second, machine translation became good enough in recent times that Chinese documents can be searched effectively. Third, China has a two tiered patent system in which usually less expensive utility models can be obtained easily. While I concentrate in this article on patentability, this new source of documents is of course an advantage for litigators who would like to invalidate a US patent.

China is becoming a major patent activity center. According to WIPO, more than 900 000 patent applications were filed in this country in 2014 alone. This is to be compared to the about 600 000 applications filed in the US over each of the last few years. According to the same source, most of these patent applications were filed by Chinese entities. They were then most likely for inventions conceived originally in China. In the past, Western country inventors had to compete mostly with the population of these Western countries, and in the US mostly with US inventors as US examiners traditionally cited mostly US patent documents during examination in many technological fields. Now, inventions made by the more than 1.3 billion Chinese residents are becoming very relevant.

China is not yet a dominant high technology innovator, although this is changing quickly. For now, many of the patent applications filed are for relatively simple devices. These are the types of devices that independent inventors conceive. Also, when a high technology innovation is conceived in China, it is more likely that a corresponding US patent application will be filed than for low technology inventions. These factor cause the increase in the number of prior art documents to affects disproportionately independent inventors and small businesses.

Regarding machine translation, SIPO, the entity managing intellectual property filings in China, has made available for searching in English on their web site translations in English of patents and published patent applications . Many commercial patent search databases also include the abstract of such published patent documents. Most of these databases use machine translation. While machine translation is not perfect, it is often good enough to be able to search and understand simple mechanical inventions. Once again, this is exactly the type of inventions that many independent inventors and small businesses want to patent.

The last factor that contributes to the publication of all this easily available information that can constitute prior art is that China has a two-tiered patent system. First, there are regular patents that last for 20 years after filing and which are examined for novelty and obviousness, similarly to European and US patent applications. However, China also has utility patents, which are in force for only up to 10 years and can be filed at a much lower cost as they are not examined at the time of filing, only if another party tries to invalidate the patent. In addition, the criteria regarding inventiveness for utility models are much less strict that the corresponding ones for regular patents. This provides an incentive for Chinese applicants to file a utility model application even for the simplest products, even if they would be unlikely to be patentable  or if commercial success is uncertain.

This aspect affects Western inventors as Western countries patent examiners in many fields only look at patent documents to assess patentability during examination. When an examiner allows a patent, except for some specific technology fields, it often means that he did not find any patent that he could cite. When someone wants to invalidate a patent, prior art outside of patent documents is often found. The current trend with Chinese patents means that as examiners start searching for Chinese patent documents, they will find more prior art that they would not have found in the past. Since these are patent documents, and available often for searching along with patent documents of other countries in a single database, examiners will increasingly feel comfortable searching for these documents, utility models included.

Simple inventions are becoming harder to patent. Inventors often come up with ideas that have been patented in the past. I cannot count the number of times in my career I did a search for an inventor and came up with something very similar that was patented 20, 50, and even more than 100 years ago, or conversely, that was published online on a commercial web site or on YouTube. However, there is now a new source to consider. While in the past an inventor may have decided that it was not worth getting a patent, and many inventions have been forgotten in this manner, there is a large number of people in China who are now encouraged to file patents applications and utility model applications even for the simplest of invention.  What we can do as patent agents and attorneys, is to start searching for Chinese documents when doing prior art searches. This may result in bad news for inventors who receive negative patentability reports, but at least they will not spend a lot of money only to have their patent application rejected later.

Another thing that we can do to better serve our clients is to offer the possibility of filing a design patent application in the US, or the equivalent in other countries, when it makes sense to do so. This is important even if a utility patent application has been filed. If the utility patent does not issue, or if it is invalidated later, there can at least be the design patent to fall back on to avoid copy. Many inventors will be unwilling to spend more money when they already paid for a utility patent, but if we better explain the reasons for filing a design patent applications, they may be more receptive.

It is also more important than ever to draft extensive patent applications, in which many variants are illustrated and described, if not claimed. With all the new information becoming easily searchable by examiners, there is more uncertainty in the documents that will be cited during examination. We have to make our patent applications more resilient in view of prior art, or they may even never issue to patent.