Recent patent law implementing regulations in China introduced, as new grounds for rejection or invalidation, Rule 11, which embodies the so-called “principle of good faith.” Peng Ye explains how Rule 11 has been applied by reading it with the patent law and patent examination guidelines.
The Implementing Regulations of the Patent Law of the People’s Republic of China (Third Revision) came into effect on January 20, 2024. Rules 50, 59, and 69 of the regulations introduced, as new grounds for rejection or invalidation, Rule 11, which embodies the so-called “principle of good faith.” However, it is well known in the legal system that, on the one hand, a violation of the principle of good faith does not necessarily render the invalidity of a legal act; on the other hand, a principle by itself cannot serve as the standard for adjudicating an individual case. To ensure legal predictability, “all applicable legal rules must be exhausted before legal principles can be applied.” In view of this, this paper attempts – through an integrated reading of the Patent Law of the People’s Republic of China (Fourth Revision), the regulations and the Patent Examination Guidelines (2023) – to delineate the boundaries for applying the “principle of good faith” in the context of patent right confirmation.
The meaning of Rule 11 of the regulations as a ground for rejection or invalidation
Rule 11 of the regulations, as a provision for rejection or invalidation, consists of two phrases: “The application for a patent shall follow the principle of good faith,” and “Any type of patent application shall be based on genuine invention-creation activities, and fabrication or falsification shall not be allowed.” How should the relationship between these two phrases be understood?
Here, we may first turn to the superior law of Rule 11 – Article 20(1) of the law. This provision likewise consists of two phrases stipulating the “principle of good faith”: “The application for a patent and the exercise of a patent right shall follow the principle of good faith,” and “The abuse of a patent right to the detriment of the public interest or the lawful rights and interests of others shall not be allowed.” It is evident that the first phrase of Rule 11 of the regulations is identical to the underlined part of the first phrase of Article 20(1) of the law. Generally speaking, avoiding duplication of provisions in a superior law is an important legislative principle. Since the law already contains the same wording, why was it necessary to restate it in the regulations?
In the author’s view, the latter phrase of Article 20(1) of the law addresses only the specific context of “exercising a patent right,” meaning that the law lacks a provision specifically targeting the context of “application for a patent.” In contrast, the first phrase of Rule 11 of the regulations – “The application for a patent shall follow the principle of good faith” – emphasizes the specific context of “application for a patent,” thereby setting the guiding principle for the second phrase: “Any type of patent application shall be based on genuine invention-creation activities, and fabrication or falsification shall not be allowed.” The latter phrase substantively supplements the principle of good faith in the specific context of “application for a patent.” This point is further confirmed by the fact that Rules 50, 59, and 69 of the regulations, as a provision for rejection or invalidation, do not cite the superior provision of Article 20(1) of the law, but instead cite Rule 11 of the regulations as the applicable legal basis.
In summary, when Rule 11 of the regulations is applied as a ground for rejection or invalidation, the focus should be on whether the application is based on “genuine invention-creation activities.” Only in this way can the provision align with the ultimate legislative purpose of the law – namely, to promote the progress of science and technology and the development of the economy and society. In other words, the application of this rule concerns substantive issues rather than mere procedural or formal ones. In fact, Section 6.7.5 of Chapter 1, Part I of the Patent Examination Guidelines stipulates that for procedural violations of the principle of good faith – such as providing false supporting documents – the examiner shall issue a “deemed not filed” notification. This illustrates that, in procedural matters, violation of the principle of good faith will not directly lead to the rejection of a patent application or the invalidation of a patent right.
The boundaries of Rule 11 of the regulations as a ground for rejection or invalidation
How can the boundaries of Rule 11 of the regulations, when applied as a ground for rejection or invalidation, be clarified? Some guidance may be gleaned from the Interpretation of the Amendments to the Patent Examination Guidelines issued by the CNIPA: “During substantive examination, the examiner shall review whether an invention patent application complies with the provisions of Rule 11 of the Regulations. In the course of examination, the Provisions on Regulating Patent Application Conduct shall apply; if, upon examination, the application is found not to comply with Rule 11 of the Regulations, it shall be rejected.”
The Provisions on Regulating Patent Application Conduct – a departmental regulation with the same legal rank as the guidelines – also came into force on January 20, 2024. Rule 3 of the provisions sets out seven specific examples of “abnormal” patent application conduct violating Rule 11 of the regulations, and includes a catch-all clause:
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Filing multiple patent applications whose invention-creation contents are obviously identical, or are essentially formed by simple combinations of different inventive features or elements;
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Fabricating, falsifying, or altering invention-creation content, experimental data, or technical effects in the patent application, or plagiarizing, simply substituting, or piecing together existing technologies or designs;
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Submitting invention-creation contents that are mainly randomly generated using computer technology or similar means;
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Filing invention-creations that are obviously inconsistent with common technical improvement or design practices, or that involve degradation, over-aggregation, or unnecessary narrowing of protection scope;
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Submitting multiple patent applications without actual R&D activities, without providing a reasonable explanation;
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Maliciously dispersing, staging, or geographically splitting multiple patent applications that are essentially associated with a specific entity, individual, or address;
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Transferring or acquiring patent application rights, or falsely changing inventors/designers, for improper purposes;
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Other abnormal patent application conduct that violates the principle of good faith and disrupts the normal order of patent administration.
Does this mean that any conduct falling within Items 1) through 7) will automatically trigger Rule 11 of the regulations and lead to rejection or invalidation? The answer is no. Referring to Provision 1 and Provision 3(8) of the provisions, the regulation of these seven types of conduct is aimed at “maintaining the normal order of patent administration.” This legislative purpose overlaps with, but is not identical to, the ultimate legislative goal of the law, namely “to promote the progress of science and technology and the development of the economy and society.”
In the author’s view, when determining whether conduct will lead to rejection or invalidation, each type of conduct must be understood within the scope consistent with the legislative goal of promoting the progress of science and technology and the development of the economy and society, in order to delineate the boundaries of Rule 11 of the regulations as a ground for rejection or invalidation.
More specifically, Items 1), 5) and 6) should be limited to first patent applications, and only where the number of applications far exceeds the reasonable range corresponding to the inventive height of the creation. After completing an invention-creation, configuring claim sets through one or multiple patents, and adjusting protection scope, duration, and ownership to balance patent strategy with right stability, is an important part of patent portfolio management. This is a lawful means for right holders to maximize their interests and recover R&D costs, and should be permitted without excessive interference. Over-intervention would undermine incentives for innovation and, in the long run, harm the legislative goal of promoting the progress of science and technology and the development of the economy and society.
Meanwhile, from a literal perspective, Article 9(1) of the law, on same-day applications, and Rule 48 of the regulations, on divisional applications (especially where claim scope is substantially the same as the parent application), appear to fall within Item 1). However, the former is a statutory mechanism and thus excluded from Item 1). As for the latter, a divisional application is essentially a form of amendment, constrained by Article 33, and Rules 48 and 49 of the regulations, and cannot exceed the scope disclosed in the parent application. Moreover, under Article 9 of the law, even if the claim scope of the divisional is identical in substance to the parent, the end result is that different inventions must be protected separately, thereby providing predictability for both third parties and the patent administration. Therefore, divisional applications are also excluded from the scope of Item 1).
The former part of Item 2), fabrication, falsification, or alteration, should refer to such acts occurring in the invention-creation activity itself; the former part of Item 4), Invention-creations obviously inconsistent with common technical improvement or design practice, should refer to situations where the invention-creation activity itself is fictitious. If the invention-creation itself is genuine, but the application documents exaggerate technical effects, claim overly broad scope without enabling embodiments, or contain drafting flaws giving the appearance of inconsistency with common practice, these should preferably be addressed under Article 26(3) or (4) of the law, rather than by applying Provision 3(2) of the provisions.
The latter part of Item 2), plagiarism, simple substitution, or piecing together of existing technology/design, should be limited to cases where it can be proven that the applicant had access to specific prior art or designs and that the application constitutes plagiarism, simple substitution, or patchwork of that specific prior art or design. In reality, inventors/designers cannot be aware of all existing technologies or designs, and technical or design work often converges toward similar directions under the constraints of natural laws and industrial utility. Thus, different inventors/designers may independently create substantially identical inventions/designs without having seen each other’s work. In such cases, presuming plagiarism without proof of access would discourage innovation. Where no proof of access exists, the matter should preferably be addressed under Article 22(2) or Article 23(1) of the law.
The latter part of Item 4), unnecessary narrowing of protection scope, should refer to situations where the contribution over prior art is extremely minimal or non-existent, and narrowing is done solely to circumvent searches or substantive rejections, resulting in claims of almost no practical value. While such “inventions” may appear to meet grant requirements, they harm the legislative goal of promoting technological and economic development. Conversely, in practice, inventors/designers often narrow claim scope in response to office actions. The extent of narrowing is generally within the applicant’s disposal right (principle of disposition), and any scope voluntarily or inadvertently surrendered becomes dedicated to the public (dedication principle). Such narrowing, which benefits the public, should not be interfered with by the examiner.
In summary, by linking the meaning of Rule 11 of the regulations – i.e., whether the application is based on “genuine invention-creation activities” – with the elements of Provision 3 of the provisions, the author has sought to outline the boundaries of Rule 11 as a ground for rejection or invalidation.
Conversely, does it follow that any conduct not falling within the above seven categories will not be subject to rejection or invalidation? Again, the answer is no. The catch-all clause in Item 8) of Rule 3 – “other abnormal patent application conduct that violates the principle of good faith and disrupts the normal order of patent administration” – may still overlap with non-“genuine invention-creation activities” regulated by Rule 11 of the regulations. Therefore, the catch-all clause should also be interpreted in light of whether the conduct constitutes “genuine invention-creation activity” in order to clarify the scope of Rule 11 as a ground for rejection or invalidation and improve predictability.
It remains important to keep a close watch on future examination practice and judicial decisions.
