Article 24(4) of the Chinese Patent Law provides that a patent application will not lose its novelty if, within six months before the filing date, the subject matter of the application is disclosed by another person without the consent of the applicant. In Beijing Qihoo Technology, Beijing Qizhi Business Consulting (collectively “Qihoo”) v China National Intellectual Property Administration (CNIPA) and third party Beijing Jiangmin New Science & Technology, the Supreme Court of China clarified the application of the above “exception to loss of novelty” provision when a design patent is disclosed in an unusual way before the filing date.
At issue is design patent No. 201430324283.6 titled “computer with graphic user interface (GUI)”, issued to Qihoo. Jiangmin requested for invalidation of the design patent with the Patent Reexamination Board (PRB, now Reexamination and Invalidation Department of the Patent Office, CNIPA) claiming the design patent was, among other factors, obvious over a prior design. The PRB sided with Jiangmin, deciding that the design patent was invalid as obvious. The decision was affirmed by the Beijing IP Court. Qihoo appealed to the Supreme Court.
Two issues were raised in the proceedings: first, whether the graphic user interface disclosed in Exhibit 1 constitutes a prior design to the design patent; second, whether the disclosure belongs to the exception to loss of novelty as provided in Article 24(4) of the Patent Law.
Prior design or not?
Regarding the first issue, the present case concerns disclosure by use. The PRB, the Beijing IP Court and the Supreme Court gave the unanimous opinion that Exhibit 1 had disclosed a prior design to the design patent. The Supreme Court opined that a disclosure by use shall be examined from three aspects: first, whether the accessibility of an unspecified person to the prior design is restricted by any specific conditions (factors such as the number of persons informed, geographical scope, payment of fees, application for registration, etc. do not constitute restrictions); second, whether the unspecified public knows the prior design is under a duty of confidentiality; and third, whether the availability to the public is real. The duty of confidentiality may either be based on legal provisions or contractual agreements, or be implied in social perception or business customs.
Exhibit 1 is a notarised, online post titled ‘360 Security Guard 10 download address’ posted on internet bulletin board system (BBS) Kafan before the filing date of the design patent. It provides a link to software ‘360 Security Guard 10.0 version’ (Security Guard). One can download, install and run the software by obtaining an experience code or by using file compressor 7-Zip.
Kafan is well-known in China with high credibility, and imposes no restrictions on visitors. Exhibit 1 shows that although the poster restricted access to Security Guard when posting the link to the software, so that only those who had obtained the experience code could download and install it, a follower of the post explicitly indicated that Security Guard could also be downloaded and installed by means of 7-Zip without the experience code.
Based on the above finding, the Supreme Court held that the GUI presented in Security Guard had been made available to the public before the filing date, and is a prior design to Qihoo’s design patent. Although Exhibit 1 discloses only the GUI without the contour of the computer in the design patent, the Supreme Court considers that such a difference is immaterial in the sense of novelty, since Security Guard is normally run on a computer.
Qihoo had argued that Exhibit 1 was inadmissible since download and installation of Security Guard by means of 7-Zip was illegal. The Supreme Court rejected the argument on the fact that 7-Zip is a general-purpose compression and decompression software, through which Security Guard can be installed and used without the experience code.
Disclosure in violation of right holder's intention
The key point of the “exception to loss of novelty” provision, in the Supreme Court’s opinion, is that another person discloses the design against the will of the right holder, including breach of express or implied obligation of confidentiality, or by learning the design from the right holder through illegal means such as threat, fraud or espionage. In determining whether a design is disclosed against the will of the right holder, the right holder’s subjective intention and objective behaviour can be taken into consideration, i.e. whether the right holder is willing to disclose their design or to allow the disclosure to take place, and whether the applicant has taken certain secrecy measures to ensure that the design is not available to the public.
The Supreme Court found that the poster clearly stated that Security Guard was “only for users who have obtained the priority experience qualification to try” and requested the experience code before installation of the software. It is clear that they were not willing to disclose Security Guard (including the GUI); objectively, they had taken the confidentiality measure of requesting the experience code to ensure that the software was not available to the public. Therefore, the poster had already fulfilled their obligation of secrecy. The post follower should have read the poster’s intention to act in confidentiality, and complied with their implied obligation of confidentiality. However, the follower violated their implied duty of confidentiality, disclosed an unusual way of installing Security Guard and presented the GUI of the software to the public against the will of the right holder.
Conclusion
In summary, the Supreme Court held that the patented design had been disclosed before the filing date by a follower of the Kafan user who made the original post, who disclosed how to download and install Security Guard without the experience code. However, the disclosure by the follower is in violation of the right holder’s intention, which makes Exhibit 1 not eligible for anticipating the novelty of the design patent. The decisions of the PRB and the Beijing IP Court were therefore reversed.
