The author has taken part in the "IP Drive in Universities" since 2011 and some other activities such as the promotion of the Patent Law in universities. The IP Drive in Universities aims at increasing IP awareness in universities, and raising the level of domestic IP protection, thus making effective use of patent information in terms of innovation, exploitation, protection and management by way of enhancing the awareness of IP rights in universities and improving their independent IP rights protection. The promotion lasted two and a half months and covered 9 universities and research institutes in Beijing. Later on, the author made many visits in the universities in order to gain a deeper understanding of IP recognition among teachers and students.

The author was surprised by the enthusiasm of teachers and students on IP in those activities and visits. They raised many questions: some of them were from laypersons’ views, such as "whether the examinations of patent applications are conducted in universities" or "whether a method can be patentable"; and some were highly professional, such as "how to obtain certainty for patent scope." They even kept on consulting the author after class. It can be seen from these circumstances that there is a great enthusiasm and urgent need of patent application among them, which also shows that the information related to patent application has been very unpopular in colleges and universities.

Inadequate drafting leading to insufficient rights

Zhang Wei

Many universities have suffered losses due to inadequate drafting of an application, though their patents are of high technologies. The examiners should do their best to help the applicants to get those rights they deserve in the substantive examination stage. A recent university application is a good example in this regard. The invention mainly relates to a vertical-flow wetland system. It can be hung on an upright quay wall or seated on the upper part of the quay wall which makes itself a part of the wall. It can build a wetland system along the bank base of rivers, lakes or reservoirs and making the system a part of the bank base. By the upright quay wall, it builds a wetland system along the quay wall. Each wetland unit is integrated into a continuous combination system, from which a reverse reflux system can be formed with the water intake in the downstream and the outlet in the upstream.

This is an application from a university, which aims at building a reverse reflux system along the bank base or quay wall through improving the volume of the wetland system. Such improvement provides a possibility to build a wetland system, which can be arranged from the upstream to the downstream in line with the water level according to the direction of the river in the city. Under this system, the water shall be purified after being pumped from the downstream before discharge. In this way, a number of local water circulation systems can be formed which are relatively reverse to the river water, and the efficiency of water purification can be enhanced. Therefore, this improvement is a very useful technology for wetland development.

However, this improvement was not mentioned in the initial filing, whereas the claims only stated the matrix, water distribution methods, and other general structures, which is of little significance to the improvement of the wetland. Upon search, the examiner pointed out that the claims possessed no inventiveness in the first Office Action (OA). The applicant did not amend the claims in his response but only stated the reasons for its creativeness. The application may be rejected at that time according to the doctrine of sufficient hearing. However, the lack of creativeness was just a result of inadequate drafting, whereas the methods in the claims would very likely have been granted a patent. Therefore, the examiner sent several notices so that the applicant amended his claims to include the promising methods in his application. Similar phenomena can be seen in many applications from universities. The applicant and the State may suffer huge losses from a rough rejection without consideration of the content in the specification.

Examiners’ reactions

Examiners should be more sensitive about pioneering technologies from universities in the examination process so as to avoid injuring the applicant’s interests. There are many applications which have no prospect of obtaining patent protection given the claims as presented, but the specification discloses high creativeness (such as the above-mentioned case). Under such circumstances, the examiners should not reject the application just for superficial reasons. They should make appropriate responses from the perspective of protecting the interests of the applicants to the utmost when considering the doctrine of sufficient hearing. They should do so to avoid injuring the applicant’s interests and may extend the review process when necessary.

To that end, the examiners may find the real contribution in an application on the basis of their master of the state of the art under similar circumstances. They should point out the questions in the OA and give appropriate guidance to the applicant to include the promising invention in the claims for protection. Patent agents should also make appropriate amendments in cooperation with the examiners after receiving the OA. The examiners should also be proactive in their communications when the agents are still puzzled in the amendments or have objections in order to achieve reasonable protection for the applicant’s interests in the end.

Patent agents’ social responsibilities

For the patent agents, the most important thing is to do a good job in making the initial drafting by conducting thorough communications with the applicants. As far as the author knows, many patent agents for university patent applications merely ask their clients to provide some background information with little or no communication with them. They draft the claims and the specifications purely on their own understanding. These inventions could be the results of longtime researches of teachers and students, who have a good understanding of the creativeness in their technologies. The patent agents should communicate clearly ions with them. This will save more time for the agents to understand the invention, help them to directly find the contents to be protected, and write a good application on the basis of their legal knowledge and agent experiences. Otherwise, a poorly written application may result in the failure of the promising contents to be protected or a later amendment being deemed as beyond the scope of application. Under such circumstances, the applicant and the agent would find that they are in a dilemma and many years of research would probably go down the drain.

Therefore, there is an urgent need for similar IP services in the targeted universities. Time has witnessed that universities have increasingly valued the quality and quantity of patent applications. Teachers and students have had unprecedented enthusiasm for patent applications because such applications have been linked with graduation and qualification. Agencies under universities are usually responsible for patent applications when they have high creativeness. The fate of these high-tech patents depends on the professional quality of these agencies. However, most of these agents are amateurish and their professional quality varies greatly from individual to individual. This has led to inadequately written of patent applications in practice. Many applications with a high level of technology have not been given reasonable protection, and some of them may go abroad or are applied by their foreign counterparts. Although the examiners can help the applicants in the substantive examination stage as far as possible, they cannot amend the application documents because such amendments must comply with the relevant provisions in the Patent Law. Therefore, agents under universities should do more to improve the professional level in comparison with their counterparts to help universities to apply for reasonable and stable protection for their patents with high technologies, and this is an unavoidable social responsibility for them.

The examiners should be more prudent in reviewing applications with high creativeness from universities in order to avoid injuring the applicants’ interests. There are many applications which have no prospect of patent granting given the claims as presented whereas there is high creativeness in their descriptions. Under such circumstances, the examiners should not reject the application just for superficial reasons. They should make appropriate responses from the perspective of protecting the interests of the applicants to the utmost when considering the principle of a hearing. They should do so to avoid the losses of interests and may extend the review process when necessary.