Aippi 2018 Study Question Conflicting patent applications Study Question Submission date: April 30, 2018



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AIPPI 2018 - Study Question - Conflicting patent applications


Study Question
Submission date: April 30, 2018
Sarah MATHESON, Reporter General

Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General

Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General

Conflicting patent applications
Responsible Reporter(s): Jonathan P. OSHA



National/Regional Group

Bulgaria

Contributors name(s)

Silviya Todorova and Valentina Nesheva

e-Mail contact

ystrateva@sabevandpartners.com


For all of the questions:
a) secret prior art means an earlier-filed patent application that was published on or after the effective filing date of a later-filed patent application.
b) effective filing date means the earlier of: 1) the actual filing date of the application; and 2) the filing date of an application from which priority is claimed that provides adequate support for the subject matter at issue.
The standard for what constitutes adequate support is outside the scope of this Study Question.

I. Current law and practice
Please answer all the below questions in Part I on the basis of your Group's current law and practice.
1. For the purposes of this question, assume the applicant and inventors of the secret prior art and the applicant and inventors of the later-filed application are unrelated.

1.a. Is the secret prior art available against the claims of the later-filed application for novelty-defeating purposes?

Yes


Please Explain
According to Art. 8(1)(3) of Law on Patents and Registration of Utility Models (LPRUM) such secret prior art includes only the content of the national patent applications, European patent applications and international patent applications for which Bulgaria is a designated country and only if they are published. Moreover the state of art includes as well the content of the national utility model applications if they are published.


1.a.i. If YES, are the entire contents of the secret prior art available, or only a portion such as the claims?

Entire conctents will be available after the publication of the application.




1.a.ii. If YES, what is the standard for evaluation of novelty? Is this the same as the standard applied to publicly available prior art?

According to Art. 8. (1) An invention shall be considered to be new if it does not form part of the state of the art. (2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, anywhere in the world, before the filing date or the priority date, as appropriate, of the patent application.




1.b. Is the secret prior art available against the claims of the later-filed application to show lack of inventive step / obviousness?

No

Please Explain


An invention shall be considered to involve an inventive step if, having regard to the state of the art in accordance with Article 8(2), at the filing date or the priority date, respectively, it is not obvious to a person skilled in the art.


1.b.i. If YES, are the entire contents of the secret prior art available, or only a portion such as the claims?

1.b.ii. If YES, can the secret prior art be combined with another prior art reference to show lack of inventive step / obviousness? * * The standard for combination of prior art is outside the scope of this Study Question. This question seeks to determine only if such a combination is possible in the scenario presented.

1.b.iii. If YES, is the standard for evaluation of lack of inventive step / obviousness the same as the standard applied to publicly available prior art?

1.c. If the secret prior art is an international application filed designating your jurisdiction:

1.c.i. Does this change any of your answers to questions 1(a) and 1(b) above? If YES, please explain.

No

Please Explain


The state of the art shall comprise also the content of all national patent applications, the European and international patent applications designating the Republic of Bulgaria, of which the filing date or priority date is earlier than the filing or priority date of the subjest patent application, provided that after that they are published in the Official Bulletin of the Patent Office.


1.c.ii. Does it matter whether the international application actually enters the national phase in your jurisdiction? If YES, please explain.

Yes


Please Explain
Concerning inventive step, it does not matter if the international patent application enters the national phase in Bulgaria. Only the publication of this international application matters because the publication makes a document to be a prior art or not.
Concerning novelty, it matters if the international patent application enters the national phase in Bulgaria. The international applications should be published in the Official Bulletin of the Patent Office.


1.c.iii. Does the date from which the international application is available as secret prior art depend on the date of national phase entry in your jurisdiction?

No

Please Explain


According to art. 70 (2) of LPRUM the international application may entry into the national phase within 31 months of the priority date.


2. For the purposes of this question, assume the applicant and inventors of the secret prior art and the applicant and inventors of the later-filed application are the same.

2.a. Is the secret prior art available against the claims of the later-filed application for novelty-defeating purposes?

Yes


Please Explain
For the examination of the novelty of a patent application only the fact of publication of a secret prior art matters and not to whom belongs this secret prior art. There are only two cases where the disclosure does not affect the novelty and these are:
1. Obvious abuse with regard to the applicant or the owner of the right to file the patent application.

2. Displaying the invention at an officially recognized exhibition by the applicant or the owner of the right to file the patent application.


However this disclosure must have been made not earlier than six months before the filing or priority date of the subject patent application.


2.a.i. If YES, are the entire contents of the secret prior art available, or only a portion such as the claims?

The whole content.




2.a.ii. If YES, what is the standard for evaluation of novelty? Is this the same as the standard applied to publicly available prior art?

Same as answer No 1.ii




2.a.iii. If YES, is there any anti-self collision time period during which the secret prior art is not available against the claims of the later-filed application for novelty-defeating purposes? What should that time period be?

No. Only in case of obvious abuse there is such anti self-collision period of six months but the abuse needs to be proved.




2.b. Is the secret prior art available against the claims of the later-filed application to show lack of inventive step / obviousness?

No

Please Explain




2.b.i. If YES, are the entire contents of the secret prior art available, or only a portion such as the claims?

2.b.ii. If YES, can the secret prior art be combined with another prior art reference to show lack of inventive step / obviousness?

2.b.iii. If YES, is the standard for evaluation of lack of inventive step / obviousness the same as the standard applied to publicly available prior art?

2.b.iv. If YES, is there any anti-self collision time period during which the secret prior art is not available against the claims of the later-filed application for novelty-defeating purposes? What should that time period be?

2.b.v. If anti-self collision is applied, are there any additional restrictions to avoid double patenting (e.g., requiring common ownership, terminal disclaimer, litigating all patents together, etc.)?

Yes


Please Explain
Double patenting is not available.


2.c. If the secret prior art is an international application filed designating your jurisdiction:

2.c.i. Does this change any of your answers to questions 2(a) and 2(b) above? If YES, please explain.

No

Please Explain


Same as 1.c.i


2.c.ii. Does it matter whether the international application actually enters the national phase in your jurisdiction? If YES, please explain.

Yes


Please Explain
Same as 1.c.ii


2.c.iii. Does the date from which the international application is available as secret prior art depend on the date of national phase entry in your jurisdiction?

No

Please Explain


Same as 1.c.iii


3. Question 1 considered the situation where both the inventors and the applicant of the secret prior art and the later-filed application are unrelated. Question 2 considered the situation where both the inventors and the applicant of the secret prior art and the later-filed application are the same. For each of the following scenarios, please indicate whether your answers would be the same as those under Question 1, or those under Question 2. If your answers are different from your answers to both Question 1 and Question 2, please explain.

3.a. Same applicant on the dates of filing, one common inventor, one additional inventor on the later-filed application:

same as Question 2

Please Explain
It does not matter if the applicant(s) or inventor(s) are the same or different. Only the contents of both examined patent applications matter.


3.b. Same applicant on the dates of filing, no common inventor:

same as Question 2

Please Explain


3.c. Different applicants on the dates of filing, same inventors:

same as Question 1

Please Explain


3.c.i. Would the answers change if the different applicants were part of a joint industry or industry-university research project?

No

Please Explain




3.d. Different applicants on the dates of filing, one common inventor, one additional inventor on the later-filed application:

same as Question 1

Please Explain


3.d.i. Would the answers change if all inventors had an obligation to assign the invention to the same applicant as of the dates of filing?

No

Please Explain




3.d.ii. Would the answers change if the different applicants were part of a joint industry or industry-university research project?

No

Please Explain



II. Policy considerations and proposals for improvements of your current law

4. Could any of the following aspects of your Group's current law be improved? If YES, please explain.

4.a. The definition of when secret prior art is applicable to defeat patentability of a later-filed application.

No

Please Explain




4.b. The patentablility standard (novelty, enlarged novelty, inventive step / obviousness) applied to distinguish the claims of the later-filed application from the secret prior art.

No

Please Explain




4.c. The treatment of international applications as secret prior art.

No

Please Explain




4.d. The treatment of total and partial identity of applicants as it relates to secret prior art.

No

Please Explain




4.e. The treatment of inventive entities (same, common, or different inventorship) as it relates to secret prior art.

No

Please Explain




4.f. Provisions for avoiding self-collision.

No

Please Explain




4.g. Provisions for limiting an applicant’s right to obtain patent claims in the later-filed application on inventions that are incremental with respect to the same applicant’s earlier-filed application.

No

Please Explain




5. Are there any other policy considerations and/or proposals for improvement to your Group's current law falling within the scope of this Study Question?

No

Please Explain



III. Proposals for harmonisation
Please consult with relevant in-house / industry members of your Group in responding to Part III.
6. Does your Group consider that harmonisation in any or all areas in Section II desirable?
If YES, please respond to the following questions without regard to your Group's current law or practice.
Even if NO, please address the following questions to the extent your Group considers your Group's current law or practice could be improved.

No

Even if NO, please address the following questions to the extent your Group considers your Group




7. For the purposes of this question, assume the applicant and inventors of the secret prior art and the applicant and inventors of the later-filed application are unrelated.

7.a. Should the secret prior art be available against the claims of the later-filed application for novelty-defeating purposes?

Yes


Please Explain
The purpose of a patent is to reserve an exclusive right to the person who has invented a solution to a technical problem. This solution has to be novel and inventive. If a secret prior art is not available for novel defeating purposes it will contradict the whole idea of granting a patent.


7.a.i. If YES, should the entire contents of the secret prior art be available, or only a portion such as the claims?

The entire contents should be available because claims can cover only part of the disclosure and the originally filed claims can be changed later.




7.a.ii. If YES, what should the standard for evaluation of novelty be? Should this be the same as the standard applied to publicly available prior art?

Yes, it should be the same




7.b. Should the secret prior art be available against the claims of the later-filed application to show lack of inventive step / obviousness?

No

Please Explain


The concept of inventive step necessarily includes the figure of the skilled person. How can the skilled person possibly arrive at the solution of the subject patent application combining two or more documents of the prior art if one or more of these documents was secret at the date of filing or priority of the subject patent application.


7.b.i. If YES, should the entire contents of the secret prior art available, or only a portion such as the claims?

7.b.ii. If YES, should the secret prior art be combinable with another prior art reference to show lack of inventive step / obviousness?

7.b.iii. If YES, should the standard for evaluation of lack of inventive step / obviousness be the same as the standard applied to publicly available prior art?

7.c. If the secret prior art is an international application filed designating your jurisdiction:

7.c.i. Does this change any of your answers to questions 7(a) and 7(b) above? If YES, please explain.

No

Please Explain




7.c.ii. Does it matter whether the international application actually enters the national phase in your jurisdiction? If YES, please explain.

Yes


Please Explain
Concerning inventive step, it does not matter if the international patent application enters the national phase in Bulgaria. Only the publication of this international application matters because the publication makes a document to be a prior art or not.
Concerning novelty, it matters if the international patent application enters the national phase in Bulgaria. The international applications should be published in the Official Bulletin of the Patent Office.


7.c.iii. Does the date from which the international application is available as secret prior art depend on the date of national phase entry in your jurisdiction?

No

Please Explain




8. For the purposes of this question, assume the applicant and inventors of the secret prior art and the applicant and inventors of the later-filed application are the same.

8.a. Should the secret prior art be available against the claims of the later-filed application for novelty-defeating purposes?

Yes


Please Explain


8.a.i. If YES, should the entire contents of the secret prior art available, or only a portion such as the claims?

The entire contents.




8.a.ii. If YES, what should the standard for evaluation of novelty be? Should this be the same as the standard applied to publicly available prior art?

It should be the same.




8.a.iii. If YES, should there be any anti-self collision time period during which the secret prior art is not available against the claims of the later-filed application for novelty-defeating purposes? What should that time period be?

The anti-self collision time period during which the secret prior art in not available is until the publication of the paten application.




8.b. Should the secret prior art be available against the claims of the later-filed application to show lack of inventive step / obviousness?

No

Please Explain




8.b.i. If YES, should the entire contents of the secret prior art be available, or only a portion such as the claims?

8.b.ii. If YES, should the secret prior art be combinable with another prior art reference to show lack of inventive step / obviousness?

8.b.iii. If YES, should the standard for evaluation of lack of inventive step / obviousness be the same as the standard applied to publicly available prior art?

8.b.iv. If YES, should there any anti-self collision time period during which the secret prior art is not available against the claims of the later-filed application for novelty-defeating purposes? What should that time period be?

8.b.v. If anti-self collision is applied, are there any additional restrictions to avoid double patenting (e.g., requiring common ownership, terminal disclaimer, litigating all patents together, etc.)?

Yes


Please Explain
According to Art. 72g. (1) In the case of an invention disclosed in both a national patent and a European patent designating the Republic of Bulgaria, both patents having the same filing date, respectively the same priority date, and belonging to the same person or his successor in title, the national patent effect shall cease.


8.c. If the secret prior art is an international application filed designating your jurisdiction:

8.c.i. Does this change any of your answers to questions 8(a) and 8(b) above? If YES, please explain.

No

Please Explain




8.c.ii. Does it matter whether the international application actually enters the national phase in your jurisdiction? If YES, please explain.

Yes


Please Explain
Concerning inventive step, it does not matter if the international patent application enters the national phase in Bulgaria. Only the publication of this international application matters because the publication makes a document to be a prior art or not.
Concerning novelty, it matters if the international patent application enters the national phase in Bulgaria. The international applications should be published in the Official Bulletin of the Patent Office.


8.c.iii. Does the date from which the international application is available as secret prior art depend on the date of national phase entry in your jurisdiction?

No

Please Explain




9. Question 7 considered the situation where both the inventors and the applicant of the secret prior art and the later-filed application are unrelated. Question 8 considered the situation where both the inventors and the applicant of the secret prior art and the later-filed application are the same. For each of the following scenarios, please indicate whether the answers would be the same as those under Question 7, or those under Question 8. If your proposals are different from your answers to both Question 7 and Question 8, please explain.

9.a. Same applicant on the dates of filing, one common inventor, one additional inventor on the later-filed application:

same as Question 8

Please Explain


9.b. Same applicant on the dates of filing, no common inventor:

same as Question 8

Please Explain


9.c. Different applicants on the dates of filing, same inventors:

same as Question 7

Please Explain


9.c.i. Would the answers change if the different applicants were part of a joint industry or industry-university research project?

No

Please Explain




9.d. Different applicants on the dates of filing, one common inventor, one additional inventor on the later-filed application:

same as Question 7

Please Explain


9.d.i. Would the answers change if all inventors had an obligation to assign the invention to the same applicant as of the dates of filing?

No

Please Explain




9.d.ii. Would the answers change if the different applicants were part of a joint industry or industry-university research project?

No

Please Explain




9.e. Different applicants on the dates of filing, no common inventor, but all inventors had an obligation to assign the invention to the same applicant as of the dates of filing:

same as Question 7

Please Explain


9.f. Different applicants on the dates of filing, no common inventor, but the different applicants were part of a joint industry or industry-university research project:

same as Question 7



Please Explain


10. Please comment on any additional issues concerning conflicting applications you consider relevant to this Study Question.

11. Please indicate which industry sector views are included in your Group's answers to Part III.


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