Before the new Chinese Patent Law came into force on 1 October 2009, Conflicting Application is defined by the law as: an identical application that was filed previously by any other person with the Patent Office and published on or after the filing date of the application being examined, which means it must meet three conditions to establish a conflicting application: A) it was filed before the filing date of the application being examined; B) it was published on or after the filing date of the application being examined; C) it was filed by another person. On 1 October 2009, the new Patent Law came into force, with amendment to Conflicting Application: an identical application filed previously by the applicant himself with the Patent Office and published on or after the filing date of the application being examined also constitutes a conflicting application. That is to say, it only needs to meet the conditions A and B to establish a conflicting application, and it does not matter whether it was filed by another person or by himself. It seems whether it is filed by another person or by himself no longer matters. However because of the invalidation proceeding, the final determination of patent right is lagged much behind. Therefore the dispute on whether it was filed by "another person" will inevitably last for some time.
We recently, on behalf of our client, invalidated the other party’s patent right based on a conflicting application (the filing date was in 2004 and hence the relevant provisions of the old Patent Law are applicable). In the case, our client, based on the conflicting application, made a request for invalidation of the disputed patent right on the grounds that it was not in conformity with the provisions of novelty. The patentee reached an agreement with the applicant of the conflicting application in the period of response: the patentee of the disputed patent right was changed to be the applicant of the conflicting application, i.e., they became the same person. It seemed that we could not meet the conduction C: it was filed by another person. It is controversial in the trade and difficult to reach consensus on the issue that whether it still constitutes a conflicting application after the patentee of the disputed patent right and the applicant of the conflicting application become the same person. In the oral proceedings of our case, the examiners clearly expressed that: it shall base on the date of filing to decide the applicant of the conflicting application, and the change afterwards would not affect the decision. It gives a clear operational standard in the process deciding whether or not it was filed by another person in determining a conflicting application afterwards.
