Richard Yong WANG, Partner, Lawyer and Patent Attorney

Novelty is one of the mandatory elements for patent grant under the Patent Law. Under Article 22 of the Chinese Patent Law as of 2021, the following conditions should be met for novelty determination: 1) the same invention-creation has not been disclosed at home or abroad before the patent application date, and the methods of disclosure here include disclosures by way of publication, use, and by any other means; 2) no patent application for the same invention-creation has been filed with the China National Intellectual Property Administration (CNIPA) by another person before the patent application date and published after the patent application date.

Under the Guidelines for Patent Examination issued in 2021 (hereinafter referred to as the Old Guidelines), a publication refers to an independent communication medium that records technical or design content, and should indicate, or have other evidence to prove, the time of publication or distribution upon publication.

In the Guidelines for Patent Examination as revised in 2023 (hereinafter referred to as the new Guidelines), publications in the above meanings are further divided into three categories: paper publications, audiovisual materials, and materials existing on the Internet or in other online databases. Besides, a part on the Internet or other online databases has been added to section 2.1.2.1 of Chapter Three in Part II of the new Guidelines.

In the old Guidelines, although Internet electronic data has been used as one of the sources and search channels for patent and non-patent literature or documentation, the online evidence, especially web evidence, was actually treated as a special case or supplement to "publications". However, with the maturity of 5G and related equipment, the cloud storage and cloud computing services are more mature and common, making the transmission and download of data more common and convenient; hence, use of the Internet has the advantages of high efficiency, speedy circulation, and fast transaction, which has great effects on the third-party information platforms, and the way, level, rate and stability of the information itself, thus bringing new problems and challenges to the prior art search and novelty examination. With the rapid update of Internet technology, its new dissemination methods and speed will impact reference search and use.

According to the patent examination requirements, references used for prior art comparison should be accurate, clear and objective. Especially they are required to be capable of proving the time of public publication or distribution upon publication of the references. Although the Internet disclosure has the advantages of higher popularity and convenience than paper public publication, there are also problems of content instability and time uncertainty, and the high-intensity of free information disclosure will bring great challenges to the prior art determination and search, and its content will inevitably be modified, deleted, information sources are difficult to be accessed to, and the publication dates hard to be identified. All this will ultimately impact the accessibility of references, thus creating uncertainty in, and obstacles to, the patent examination.

Publications, audiovisual materials, and materials existing on the Internet or in other online databases are separately discussed and reviewed on the basis of the new Guidelines.

1. Publications and Audiovisual Materials

Paper publications usually refer to all kinds of printed and typed paper documents, such as paper patent documents, scientific and technological magazines, scientific and technological books, academic papers, professional literature, textbooks, technical manuals, officially published conference proceedings or technical reports, newspapers, product samples, product catalogs, advertising brochures, etc.

Audio-visual materials are possibly materials made by electrical, optical, magnetic, photographic and other methods, such as microfilm, films, photographic negatives, video tapes, magnetic tapes, records, compact discs, etc.

Print publications and audiovisual materials are not subject to the limitations of geographical location, language, or ways of accession, nor to that of time. The availability of paper publications and audiovisual materials is irrelevant to the number of publications, the state of being read, or applicants’ knowledge about them.

However, paper publications and audio-visual materials printed with the words "internal materials" and "internal circulation/distribution" on them are not public publications if they are indeed circulated within a specific scope and required to be kept confidential.

The date of printing of paper publications and the date of publication of audiovisual materials are considered to be the date of publication, unless there is other evidence proving the date of disclosure.

Compared with the old Guidelines, the provisions of the new Guidelines on publications and audiovisual materials have not been changed much, except for emphasizing that the "availability" of paper publications and audiovisual materials is irrelevant to the number of publications and circulation, the state of being read, or applicants’ knowledge about them, and highlighting that the printing date of paper publications and the "publication date" of audiovisual materials are considered to be the publication date. These changes are further clarifications and reaffirmations of the provisions that have been set out in the previous and current practical examinations.

2. Materials Existing on Internet or in Other Online Databases

Materials existing on the Internet or in the other online databases refer to texts, pictures, audio, video, and other materials stored in the form of data and disseminated through the Internet. Materials existing on the Internet or in the other online databases shall be available through lawful means, and the acquisition of the materials has nothing to do with whether a password or payment is required, or whether the materials have been read.

With regard to how to determine the date of publication of information existing on the Internet or in the other online databases, the new Guidelines stipulate that the date of publication shall generally prevail, unless there is other evidence proving the date of publication. With the increasing number of books, journals, dissertations, and other publications put online, the new Guidelines stipulate that the publication date is the online publication date recorded on the website. However, if the above-mentioned publications also have paper publications with the same content, the publication date may also be determined on the basis of the printing date of the paper publication, usually the earliest publication date that can be determined. For materials that do not specify the date of publication on the web page or the date of publication is doubtful, the new Guidelines stipulate that the date of publication may be determined by reference to the date of publication and the date of modification recorded in the log file, the date of indexing given by the search engine, the date displayed by the Internet Archive service, the timestamp information displayed by the Internet Archive service, or the date of publication of the reproduced information displayed on the mirror website.

In practice, common disclosures involving Internet materials include the following categories:

1) E-Commerce: An e-commerce system website is a product information release and sales platform, which provides the design of the product, the function and performance characteristics of the product, as well as buyers' product evaluation or the function of posting the order with pictures after the transaction is completed. The information about the products sold publicly on these e-commerce system websites and online listings can make the relevant products in a state where the public know about them. However, the website of this type of platform is very interactive, and the product information displayed on the website is likely to be edited, uploaded, or deleted by the seller himself. For such online evidence, it is difficult to prove the correspondence between the disclosed content and the time of disclosure. In this case, the reputation of the website, the mechanism of managing the rights of the website, the auditing and logging mechanism of the website, the timestamp of the page, and the content on the page that reflect the date should be considered to determine whether it can be used as a prior art. If the time displayed on the page is the publication time automatically generated by the server, and it has been determined that the content of the review or the image can no longer be edited once it is generated, the relevant information can be considered to be known to the public from the time of publication.

2) Media Coverage: Publishing news reports through the Internet can keep the content of the report in a state of accessibility to the public when they want to. Due to the timeliness of news and the credibility of the news media, the time displayed on the news page or news client can generally be considered to be the date of disclosure. In addition, if multiple news organizations and/or online media outlets report on publicly available product information, the information they disclose can be corroborated by each other.

3) Publication on the Websites of Standardization Organizations: To date, many international and domestic standardization organizations publish technical documents, technical specifications, technical reports, meeting proposals, etc. related to the standards to the public on their websites, for the purpose of public inquiry or download, so the above-mentioned technical documents are in a state where the public can access if they want to once uploaded. Normally, the time corresponding to the name of a document listed on the website of such a standardization organization is the time when the system automatically generates the document when it is uploaded to the public server on its official website, and is the date of disclosure of the document.

4) Book and Periodical Databases: At present, many book and periodical databases include publications published in the traditional publishing methods, and those also published digitally online. This kind of online publishing usually has a high credibility and popularity, and the time of publishing on the Internet can be taken as the disclosure date of the published content.

5) Social Platforms: They generally include official accounts, moments, shared communication spaces, etc., and social platforms provide services centered on individuals or online community service groups. According to the user settings rules of the social platform, its visibility scope includes those available to everyone, friends, and only themselves. For information published on such social platforms, the determination of the date of publication should not be generalized, and specific analysis and determination are required. Once the visibility is set, it cannot be changed. If the relevant content on the social platform can be logged in, browsed, or obtained through an unspecified third-party account, it usually means that the initial scope of disclosure is publicly visible to everyone, so that the relevant content is in a state where the public can access if they want to. If the user settings rules of a social media platform allow its users to set the permission to open to the public at will, and the permission settings and changes are not recorded on the web page or server, it is usually not directly assumed that the public content is in a state where the public can access if they want to.

6) Enterprise/Organization or Individual Websites: A large number of enterprises usually use their own websites to publish product information, display and publicize products. However, since such websites are managed and controlled by the enterprises themselves, the actual release time may not be consistent with the time displayed on the website. Therefore, the release time of the product is possibly determined in combined with other supporting evidence.

In short, with the development of network and computer technology, the Internet has become an important channel for people to publish, search, and obtain information. However, as network information is easy to delete or modify, how to determine the content of network information release as a publication and the publication date is always a challenging issue. The new Guidelines provide some instructions and norms in this regard to facilitate the patent application examination. The Summary of the Annual Report of the Supreme Court on Intellectual Property Cases (2015) points out that when reviewing and determining the authenticity and probative power of the webpage of an Internet website fixed in the form of a notarial deed, the production process of the notarial deed, the formation process of the webpage and its publication time, the qualification and credit status of the website that manages the webpage, the operation and management status, the technical means used, and other relevant factors should be considered to make a comprehensive determination in combination with other evidence in the case. Although Section 5.1 of Chapter Eight in Part IV of the new Guidelines stipulates that "the earliest time for the public to browse Internet information is the time when the Internet information is made publicly accessible, and generally the time of publication of Internet information shall prevail," and an overview of the Internet or other online databases is added to Chapter Three of Part II; however, in the face of actual disputes under different situations, the most important thing is to still take the website or network platform management mechanism as the entry point, and pay attention to the ways for the public to obtain relevant network information. The case-by-case analyses should be made of the correspondence between the content and time of the online information, the identity and intent of the online information publishing entity, the nature of the website or online platform, and the dynamic adjustment of the website or online platform's management mechanism to determine whether it can reach the level to which the party bearing the burden of proof must prove that "the existence of the facts to be proven is highly probable" as provided by the Supreme Court in Article 108 of the Interpretation of the Civil Procedure Law of China.

Author's Profile:

Mr. Richard Yong Wang graduated from the Department of Computer Science of East China Normal University in Shanghai in 1991, and received his Master's degree from the Institute of Computing Technology of the Chinese Academy of Sciences in 1994, and his Master's degree in law from the People's University of China in 2005. Mr. Wang joined Panawell as a senior partner in 2007.

Mr. Wang's professional practice mainly covers computer hardware, computer software, communication technology, semiconductor devices and preparation technology, automatic control and household appliances. He has been engaging in consulting and agency work for intellectual property protection for decades, representing domestic and foreign applicants in executing thousands of patent applications, and gaining rich experience in drafting patent applications, replying office actions, dealing with cases of patent application reexamination, patent invalidation, patent administrative litigation, infringement litigation, integrated circuit layout and computer software protection. As an experienced lawyer and patent attorney, Mr. Wang has participated in dozens of patent cases involving many well-known multinational companies in the world as a leading and main counsel.