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.

Necessity to consider time differences

In the Elisha Gray and Alexander Graham Bell controversy over the invention right of telephone, the Supreme Court of the United States ruled that Bell invented the telephone on the basis, among others, that Bell filed his patent application a few hours earlier than Gray. Thus, it indicated that a few hours can be essential, and the time difference can lead to a priority date of one day earlier or later.

From the perspective of actual situations, the time difference issue has been taken into account, and a few solutions have been given, by the USPTO, EPO and JPO.

As to what it should be, not considering the time difference may lead to the following two problems:

I. A subsequent publication becomes prior art.

For example, an applicant submits its patent application A to the patent office in China at 8:00 a.m. on August 8th 2008 in the Peking Time, so that the filing date for the application A is August 8th 2008. One hour later, the same applicant uploads a proposal B that contains the technical scheme of the application A to an Internet server in the United States at the local time, so that the proposal B is immediately disclosed. Because of the time difference, the proposal B is published at 21:00 p.m. on August 7th 2008 in the United States. If no consideration is given to the time difference, the proposal B becomes the prior art against application A. But, the fact is that proposal B, which is published later than the filing date of application A, should not constitute prior art.

II. The applications that are filed simultaneously may conflict with each other.

For example, applicants a and b submit their applications A and B respectively to the State Intellectual Property Office of the People’s Republic of China and USPTO at 8:00 a.m. on August 8th 2008 in Peking Time. The filing date for application A is August 8th 2008, but that for the application B is August 7th 2008. If applicant B takes his application B in the United States as the priority application and applies for the grant of a patent B* in China, the application B* will conflict with application A from the time perspective, when no time difference is accounted for.

Therefore, this article argues it is necessary to take the time difference into account. But, it is very difficult, if not impossible, to do so for each and every patent application, in light of the cost, the efficiency and the current situation. In the event that not considering the time difference would damage the interests of an applicant or the general public, it may be necessary to convert the dates according to the time zones, in order to balance the interests between the applicant and the general public (one of the purposes of the patent system), provided that the party that argues for the time difference provides the exact time of patent application or publication of the relevant comparison document. In practice, generally no time difference will be considered except under exceptional circumstances; in the allocation of the burden of proof, the party that argues for the time differences should take the burden and if it fails to produce evidence, no time difference will be considered by the court.

Converting the time difference

The determination of prior art can be related to the time that the first application is filed, the time that the subsequent application is filed, and the time that the comparison document is published. Thus, it may involve the time zone of the first application, the time zone of the subsequent application, and the time zone of the comparison document. The methods to convert these times, as discussed hereunder, are benchmarked on the time zone of the first application, the time zone of the subsequent application, or the time zone of the comparison document, to convert the times in the other two time zones into the times in the benchmarked time zone.

Because of the difficulty in proving in a positive way the reasonableness of any time conversion method, as long as the time difference is considered, we may exclude them one by one.

First, the conversion method to convert the time into the time zone of the first application or the subsequent application into the time of the time zone of the comparison document is the most unsuitable because: (1). from the perspective of legal principles, the “date of application” as specified in Article 22 of the Patent Law of the People’s Republic of China, even if interpreted in a broad way, can hardly mean any date in a time zone where the relevant comparison document is published; (2). this conversion method requires the exact time of the previous (or subsequent) application, which can hardly be obtained; and (3). in the case that more than one time zone is involved for more than one comparison document, it is a problem which time zone should be used, that is, whether to benchmark the time zone of any or each of the comparison documents.

Second, from the perspective of legal principles, the conversion method to convert the time in the time zone of the first application or the comparison document into the time in the time zone of the subsequent application is the most consistent with the “date of application” specified in Article 22 of the Patent Law. However, there exist two problems: (1). Even if the subsequent application has the same priority as the previous application, the prior art against the previous application is never the same as that against the subsequent application. In the “Mobile Phone Back Cover” case, regarding the patent application filed in the United States, the article “The Genuine Nokia 7260 Debut, the Next of Kin of Nokia 7610,” together with pictures, was published on the Internet at 9:45:27 a.m. on August 17th 2004 in the Beijing Time in China, which time corresponded with a time on August 16th 2004 in the United States. Thus, the article and pictures, which were published earlier than the priority date (or the filing date), that is, August 17th 2004 in the United States, constituted prior art against the subsequent patent application. If the first application were filed before 12:00 p.m. on August 17th 2004 in the Official Time in the United States to correspond with a time before 24 p.m. on August 17th 2004 in the Beijing Time in China, the article and pictures would not constitute prior art against the subsequent application. (2). The exact time of the previous application is indispensable, which is often hard to obtain.

Third, the conversion method to convert the time in the time zone of the reference into the time in the time zone of the first application is relatively reasonable, because:

(1). The priority system, which originated from the Paris Convention for the Protection of Industrial Property, means that an applicant who files a subsequent application concerning the same subject as his first application in another signatory shall be entitled to request that the filing date of the first application be used as the filing date for the subsequent application. Article 102 of the Rules for the Implementation of the Patent Law of the People’s Republic of China states that “Any international application which has been accorded an international filling date in accordance with the Patent Cooperation Treaty and which has designated China shall be deemed as an application for patent filed with the Patent Administration Department under the State Council, and the said filing date shall be deemed as the filing date referred to in Article 28 of the Patent Law.” Therefore, from the perspective of legal principles, the “date of application” under Article 22 of the Rules can be interpreted in a broad way to mean the date of the first application as determined according to the time zone where the first application is filed.

(2). If the subsequent application has the same priority as the previous application, the prior art against the previous application is the same as that against the subsequent application. This is more consistent with the intention of the priority system.

(3). This conversion method does not need the exact time that the previous application was filed, as the exact time is often hard to obtain.

On the basis of the above, this article believes that the most reasonable is to “benchmark the time zone of the first application and convert the time in the time zone of the comparison document into the time in the time zone of the first application.”

Time difference not considered for priority period

The priority period is less relevant to the other theories and provisions of the patent law system. Moreover, it has been extended indirectly by a few international treaties or national laws. As the exact time that a previous or subsequent application is filed can hardly be obtained or recorded, that is, it is very difficult, if not impossible, to determine if any time difference between the previous application and the subsequent application is within the prescribed period, therefore this article believes that no time difference may be considered in calculating the priority period.

Summary

Beginning with the administrative patent invalidation case, considering the time difference - related provisions of the United States, Japan and Europe as well as practical operability, this article takes the position that the party that claims the time difference should take the burden of proof and if it fails to do so, no consideration should be given to the time difference. Among the three conversion methods, the most reasonable is to “benchmark the time zone of the first application and convert the time in the time zone of the comparison document into the time in the time zone of the first application.” Finally, no time difference may be considered in calculating the priority period.

(Translated by Ren Qingtao)