[Direct answer]In the Beijing area, conflicting applications can lead to the loss of novelty in patent applications and constitute a "serious flaw" in the substantive examination process for granting patents. According to Article 22, Paragraph 2 of the Patent Law of the People's Republic of China (amended on October 17, 2020 and implemented on June 1, 2021), any unit or individual who has filed an application for the same invention or utility model with the Patent Administration Department under the State Council before the application date, and which is recorded in the patent application documents or patent documents announced after the application date, shall constitute a conflicting application. The same rule applies to industrial designs (Article 23, Paragraph 2). To address this, applicants can modify the claims to avoid comparative documents, delete conflicting claims, or request a review within three months after the rejection. It is recommended to conduct a prior art search before submitting the application to eliminate risks as early as possible. For specific solutions, please refer to the relevant guidelines.Intellectual property protection and corporate legal services.

1. Problem background and typical scenarios

After completing the R&D, enterprises are eager to apply for patents, but often encounter situations where their "technical solutions collide with patent applications that have been submitted by others but not yet made public": competitors submit applications for the same solution in the same R&D direction earlier, and their patent documents are not published until after the application date, making it difficult to detect through routine searches; R&D personnel mobility leads to the original unit filing a preemptive patent application for the technical solution; and enterprises disclosing the technology at exhibitions or in papers are preemptively applied for by others. Such situations may arise in the substantive review of inventions and utility models, as well as in the review of design authorizations. Once they are identified as conflicting applications, novelty will be directly denied, and authorization will be hindered. In the review practice in Beijing, disputes are mainly focused on the judgment of "the same invention or utility model" and the determination of the publication date of the comparison documents. For technical contracts and trade secrets, they can be combined with other evidence to determine the validity of the claims.Business and contract dispute resolution services for enterprisesEvaluate them together.

II. Key points of contention

The focus of the dispute centers on four points. Firstly, whether it belongs to the "same invention or utility model": whether the technical solutions are substantially the same, and the review applies the principle of separate comparison, that is, only comparing a comparison document with the present application, not with other existing technologies. Secondly, the qualification of conflicting applications: it must be a prior application filed before the application date and published after the application date. The publication date after the application date does not affect its conflicting effect, and the applicant's own prior application may also constitute a conflicting application. Thirdly, whether it can be overcome: conflicting applications only damage novelty and usually do not affect creativity. It can strive for partial authorization by modifying the claims and filing a divisional application. Fourthly, exceptions to the grace period: under the circumstances specified in Article 24 of the Patent Law, certain first disclosures within six months before the application date will not lose novelty. For those involving foreign layout and priority connection, reference can be made to the relevant provisions.Financial capital and cross-border services involving foreign affairsCoordinate and arrange everything in an organized manner.

III. Professional analysis by Hengluo Lawyers

Based on Hengluo's practical observations in handling intellectual property cases, the root cause of conflicting application issues often lies in "insufficient pre-application search". Many enterprises only search for publicly available patent documents, ignoring previously submitted but not yet published applications. By the time the examiner points this out during the substantive examination stage, time and financial costs have already been incurred. Hengluo lawyers typically recommend the following: After finalizing the R&D, conduct a comprehensive pre-application search covering the disclosure and announcement data of Chinese patent applications; prepare alternative claim sets for the core solutions when submitting the application, so that if the examiner points out conflicts, modifications can be made or a divisional application can be filed in a timely manner; evaluate the feasibility of dealing with others' suspected preemptive registrations through modifications, re-examination, or subsequent invalidation procedures. If a patent is found to fall into conflicting application situations after being granted, any unit or individual may request the declaration of invalidity of the patent right in accordance with Article 45 of the Patent Law. Experience shows that the cost of proactive modification before granting is far lower than that of invalidation after granting. For cases involving patent invalidation and related administrative litigation, a seamless connection can be made.Intellectual property protection and corporate legal servicesAdvance.

IV. Practical Suggestions and Legal Basis

The core basis is Article 22 Paragraph 2 (novelty and conflicting applications), Article 23 Paragraph 2 (circumstances of conflicting applications for industrial designs), Article 24 (grace period for not losing novelty), Article 41 (if dissatisfied with the rejection decision, a review may be requested within three months from the date of receipt of the notice), Article 45 (any unit or individual may request the invalidation of the patent right from the date of the announcement of the patent right), and the review rules for separate comparison of conflicting applications in the "Patent Review Guidelines". Practical suggestions: complete the search for prior applications before submitting the application; respond in writing and modify the claims within the specified time limit after receiving the review opinion; if necessary, request a review within three months; continuously monitor the publication of similar applications after authorization to evaluate the stability of the rights. Relevant procedural matters can be assisted bySpecial services and other case-related servicesHandle it.

5. Henglu Law Firm's Advice

Resisting an application does not necessarily lead to a "rejection outright", but it comes at the cost of time and money. Three tips: First, it's essential to conduct a thorough search before filing an application, and core patents must be checked first. Second, there are clear deadlines for responding to review opinions and requesting a review. Failure to meet the deadline may result in the application being deemed withdrawn or the decision becoming effective, leading to the loss of rights. Third, leave room for amendments to the claims and avoid defining the scope of protection in a restrictive manner. When handling similar cases in the Beijing area, Hengluo Law Firm typically first assesses the scope for amendments and division of applications before deciding on a response strategy, in order to secure the maximum protection for core patents. For enterprises with tight R&D and filing schedules, it is recommended to engage professional teams in advance to avoid responding hastily. For further evaluation, please contact us.Intellectual property protection and corporate legal services.

VI. Frequently Asked Questions

Q1: If a patent application is found to conflict with another application, can it still be granted?

The granting of authorization depends on the degree of overlap between the present application and the conflicting applications. It cannot be generalized, and there is no definitive conclusion of either mandatory authorization or mandatory rejection. If all the claim requirements of the application are substantially identical to the technical solutions of the comparison documents, the novelty will be lost, and it will be difficult to obtain authorization for this part. If only some claim requirements conflict with each other, it is usually possible to retain the remaining parts and strive for authorization by deleting or modifying these claim requirements. Since conflicting applications only harm novelty and generally do not affect creativity, there is often room for modification. It is recommended that after receiving the review opinion, you entrust a professional lawyer or patent agent to evaluate the differences between the comparison documents and the claim requirements, and respond in writing within the specified time limit. If you disagree with the rejection decision, you can also request a review within three months in accordance with the law.

Q2: To check for conflicts in the application, what materials do I need to prepare?

The core materials include: the application documents of this application (claims, description, drawings, used to determine the scope of protection), proof of the application date and publication date (notice of acceptance, publication number), the search results of prior applications (full text of the comparison documents and their publication or announcement dates), priority proof documents (used to verify others' prior application dates when claiming priority), and R&D process records (experimental data, project documentation, used to corroborate the independent R&D and completion time). The search should be conducted in the patent database made public by the China Intellectual Property Administration, covering the publication of invention patent applications and the announcement of utility model and design patent applications. The more complete the materials are, the more accurate the determination of the scope of overlap and the formulation of modification plans will be, thus avoiding a passive response in the substantive examination stage.

Q3: What is the approximate cost of handling a conflict application?

The fees depend on the processing stage. Before applying, you can conduct a search yourself through the National Intellectual Property Administration's public system, or you can entrust a professional agency to issue a search report, the cost of which varies depending on the scope and depth of the search. For responding to review opinions and modifying claim requirements, if you entrust a patent agency or lawyer, the fees will be charged according to the service content. For entering the review procedure, you need to pay the review official fees to the National Intellectual Property Administration, the fee standard of which shall be subject to its announcement. For subsequent invalidation declarations or patent administrative litigations, you shall pay the corresponding fees according to the procedures and may incur attorney fees. None of the above have a unified "package price". It is recommended to confirm the charging items and scope in writing before entrusting, and make a decision after comparing the cost of modifying the authorization with that of filing a new application for a new scheme.

Q4: How long does it usually take from the initial review to the re-review?

Invention patent applications are generally published eighteen months after the filing date. The review period is affected by case backlogs and technical fields, typically taking one to several years, with no fixed timeframe. For those who disagree with the rejection decision and request a review, they should file the request within three months from the date of receipt of the notice, in accordance with Article 41 of the Patent Law. The review and subsequent administrative patent litigation process depend on the progress of the procedures, with significant differences among different cases. Utility models and design patents may also encounter conflicting applications during the preliminary review, with a relatively faster overall pace. It is recommended to allow sufficient time for defense and division of applications for core patents to avoid responding hastily within the legal time limit and resulting in loss of rights.

Q5: If we find that there might be a conflicting application, what should we do first?

It is recommended to proceed in four steps: First, fix the application documents and evidence of the application date, and confirm the scope of protection of the claims; Second, conduct a comprehensive search for prior applications in the public database of the China Intellectual Property Administration, download the full text of the comparison documents, and check whether the publication date is after the application date; Third, compare the application with the comparison documents article by article, and circle the substantially identical technical features; Fourth, respond to the review opinions in writing within the specified time limit, modify the application if necessary, split the case if necessary, and request a review of the rejection decision within three months. Throughout the process, keep the search records and response texts, and leave sufficient evidence for possible reviews or subsequent procedures. When necessary, engage professional lawyers or agents to evaluate the situation.

The above content is based on the compilation of judicial practices in the Beijing area. The facts of individual cases and the jurisdiction of the court may affect the conclusions. Welcome to consult Henglu Law Firm for specific situations.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the relevant evidence materials, so as to avoid missing the statutory time limit. →Intellectual property protection legal services·Beijing Henglu Law Firm

Disclaimer: This article is compiled based on the current effective laws and regulations and open adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. If a dispute arises, please consult a practicing lawyer in time.