Li Yan

Question raised – the “Mobile Phone Back Cover” case

I. Case review

The case involves a design patent named “Mobile Phone Back Cover” (Patent No. 200530004713), for which the filing date was February 15th 2005, the priority date was August 17th 2004, and the priority file was the application submitted in the United States.

On July 17th 2006, an invalidation request was made with at the Patent Reexamination Board to invalidate the above patent on the account of prior art. The requester submitted a notarization of a webpage showing an article “The Genuine Nokia 7260 Debut, the Next of Kin of Nokia 7610,” together with pictures, at the Chongqing Site of Zhongguancun Online at 9:45:27 a.m. on August 17th 2004. The requester argued that the time 9:45:27 a.m. on August 17th 2004 in China was still August 16th 2004 in the United States, which was earlier than the priority date, August 17th 2004, of the patent concerned. Thus, the novelty of the patent was defeated by the disclosure on the above website.

II. Invalidation granted

The invalidation decision No. 10616 by the Patent Reexamination Board affirmed the argument of the invalidation requester by stating that on the basis of time difference, theoretically the time 9:45 a.m. on August 17th 2004 of the Beijing Time in China corresponded with 20:45 p.m. on August 16th 2004 of the East Standard Time (which is also the earliest time in the United States) or 21:45 p.m. on August 16th 2004 of the Official Time in the United States. Thus, the time 9:45 a.m. on August 17th 2004 of the Beijing Time was on August 16th 2004 in the United States, which preceded the priority date of the patent concerned.

III. First trial

In its judgment, Beijing No. 1 Intermediate People’s Court held that since the case was concerned with the patentability of a patent filed in China under the Patent Law of the People’s Republic of China, the time and date of an Internet-based disclosure should be determined on the basis of the Beijing Time (CST). According to the existing evidence, the uploading of the design picture(s) of Nokia 7260 to the Chinese website indicated that the design was disclosed on August 17th 2004, which was the same as the priority date of the patent concerned. The Patent Reexamination Board lacked a legal basis and was wrong to compare the disclosure date of the design on the Internet with the priority date of the patent concerned by converting the Beijing Time into the Official Time of the United States.

IV. Second trial

Similarly, the Judgment (2009) Gaoxingzhongzi No. 23 of Beijing Higher People’s Court stated that the evidence submitted to the Patent Reexamination Board indicated that the picture of Nokia 7260, as prior design, was disclosed on the same date as the priority date (which is August 17th 2004), and could not be used as prior art against the patent concerned.

V. Center of the dispute

The dispute was focused on a patent application with foreign priority. If the first application is filed in a time zone different from that where a comparison document is located: (1). whether the time difference between the time zones should be converted; and (2). if so, should it be done? The answers to these questions will have a direct impact on the determination of prior art and whether an art known to the general public domestically or internationally constitutes a prior art. This is discussed in the following, taking comparison documents as an example.

Time difference considerations in the United States, Japan and the Europe

I. Provisions of the United States Patent and Trademark Office

The United States Patent and Trademark Office (USPTO) provides that the filing date for an application is the date that the application is received by the Office. Since the Office is located in the East Standard Time (EST) Zone, any application that is filed through the EFS-Web (which is similar to the Electronic Patent and Trademark Application System in China) will be deemed filed on the date that the application is received by the Office. For example, an applicant in California submits through the EFS-Web an application at 10 p.m. on May 1st Pacific Time – the local time of California, and the application is received by the Office at 1 a.m. on May 2nd EST Time. Thus, the date of application is the second day of May. However, if the applicant takes the United States Postal Service and sends his application by midnight of May 1st of the local time, at 10 p.m. on May 1st of the Pacific Time, for example. Then, the date of application is still the first day of May.

From the above, in the case of an electronic application, the filing date is determined to be the date that the application is received by the Office at the time zone where the Office is located; in the case of a posted application, the filing date is determined to be the date that the application is sent within the time zone where the postal service is located. As shown, if the time zone where the application is filed is not the time zone where the Office is located, one who files his application through the EFS-Web is granted a date of application that is one-day different from that which is granted to one who files his application by using the postal service.

II. Provisions of the Japan Patent Office

With respect to applications filed after January 1st 2000, the section “Determination of Publication Date for Electronic Technical Information on the Internet, etc.” of the Guidelines for Patent Examination in the Japan Patent Office (JPO) states that any technical information in any electronic form that is published on the Internet on a date prior to the filing date of a patent will constitute prior art against the patent. The time and date that such technical information in the electronic form is published on the Internet in any country or region other than Japan will be converted into the time and date in Japan Standard Time.

From the above, in determining the publication date of any electronic technical information on the Internet, the Japan Patent Office converts the local time of such publication into the Japan Standard Time, that is, it takes into account the time zones and time differences when it decides upon the publication date of a reference.

III. Provisions of the European Patent Office

To explain the relationship between publication dates and time zones, the Guidelines for Examination in the European Patent Office (EPO) states that “if a publication date is close to the relevant priority date, the time zone of publication may be crucial to interpret a publication date.” It also provides that the examiner should indicate how and when the publication date is obtained when citing Internet disclosures.

From the above, the European Patent Office is of the opinion that the time zone of publication may have a significant impact on the interpretation of a publication date that is very close to the relevant priority date. In this context, whether the time difference is accounted for will directly affect the determination on whether the published document forms prior art and finally the survival of a patent application.