CHINA / PATENTS / TECHNOLOGY DISCLOSURE

In an article in China Patents and Trademarks, Vol 61 no 2, April 2000, entitled Contracts and Technology Disclosure, by Zhang Rongyan, examiner of the Patent Reexamination Board of the Chinese Patent Office, reference is made to the practice of the European Patent Office in an attempt to solve a problem arising in the Board. The author’s starting-point is that an applicant for a patent may cause his technology to lose novelty, disclosing the technology through transfer or product sales, thereby disqualifying themselves for the grant of a patent. "In cases of request for invalidation received by the Board, the evidence of the requesting party used to prove prior technology transfer or product sales before patent application usually contains a contract, say, a technology transfer contract or a product sales contract. So, how to identify the relationship between a contract and technology disclosure is an issue often confronting the Board in its handling of invalidation requests." One view is that the contract is deemed to be confidential, the other that, in the absence of a confidentiality clause, novelty is lost. In looking at the guidelines and case-law of the European Patent Office, the author summarises the position by saying that offering is a way of technology disclosure; that the number of persons who gain the knowledge of a piece of technical information has nothing to do with the disclosure of technology; and that, as long as they are not bound to secrecy, it is deemed that other people may gain the knowledge. The author describes a case which he had to deal with recently in his official capacity and applies the foregoing principles to it. He concludes that "without any agreement on confidentiality, even if the sales act occurs only once, it constitutes disclosure of the technology". The patent involved in the case was invalidated on the ground that the patented product had been sold and exploited before the filing date. [20023]