In order to protect the rights and interests of applicants and avoid losing novelty due to the disclosure of patent applications under specific circumstances before the filing date, the Patent Law of China provides a grace period for novelty under specific circumstances. This article explains the conditions for enjoying the grace period in China.
Provisions of Patent Law of China on Grace Period
The 4th Revision of the Patent Law of China came into force from June 1, 2021. Among other changes, Article 24 of the Patent Law was amended to add a new situation of enjoying grace period for novelty, “where it was disclosed for the first time in the public interest in the event of a national emergency or extraordinary situation,” and put it as the first situation of grace period for novelty. According to the revised Article 24 of the Patent Law of China currently in force, an invention-creation for which a patent is applied for does not lose its novelty if, within six months before the date of filing (or the priority date where priority is claimed), one of the following events occurred:
(1) where it was disclosed for the first time in the public interest in the event of a national emergency or extraordinary situation;
(2) where it was exhibited for the first time at an international exhibition organized or recognized by the Chinese Government;
(3) where it was first made public at a prescribed academic or technological meeting; or
(4) where it was disclosed by another person without the consent of the applicant.
Explanation on the application of grace period in the Guidelines for Patent Examination
Section 6.3, Chapter 1, Part I of the Guidelines for Patent Examination provides detailed explanations for each situation in Article 24 of the Patent Law of China, as follows.
I. According to the Amendment Draft of the Guidelines for Patent Examination (Draft for Soliciting Opinions) published on the website of the China National Intellectual Property Administration on August 13, 2021, an invention-creation for which a patent is applied for can enjoy the grace period according to Article 24(1) of the Patent Law of China, i.e., where it was disclosed for the first time in the public interest in the event of a national emergency or extraordinary situation, as long as the following conditions are met.
(1) The invention-creation for which a patent is applied for was first disclosed for the purpose of public interest within 6 months before the date of filing, when an emergency or an extraordinary situation occurred in the country.
(2) If the applicant knows about such disclosure before the date of filing, the applicant shall make a declaration claiming the grace period in the application while filing the application, and submit supporting materials within two months from the date of filing. If the applicant knows about such disclosure after the date of filing, he shall submit a declaration requesting for the grace period with supporting materials within two months after he knows about it. The examiner may, if necessary, require the applicant to submit the relevant supporting materials within the specified time limit.
(3) The supporting materials submitted by the applicant shall be issued by the relevant departments of the people’s government at or above the provincial level. The supporting materials shall indicate the reason and date of disclosure for the purpose of public interest, as well as the date, form and contents of the disclosure of the invention-creation, and be stamped with a seal.
II. An invention-creation for which a patent is applied for can enjoy the grace period according to Article 24(2) of the Patent Law of China, i.e., where it was exhibited for the first time at an international exhibition organized or recognized by the Chinese Government, as long as the following conditions are met.
(1) The invention-creation for which a patent is applied for is first exhibited at an international exhibition organized or recognized by the Chinese government.
International exhibitions organized by the Chinese government are limited to “the international exhibitions organized by the State Council or the departments of the Chinese government, or by other institutions or local governments approved by the State Council”. The international exhibitions recognized by the Chinese government are limited to “the international exhibitions registered with or recognized by the International Exhibitions Bureau as stipulated by the International Exhibition Convention”, and it is required that the exhibits exhibited at the international exhibitions must have products from foreign countries in addition to those of the host country.
(2) The first exhibition time is within 6 months before the date of filing. The applicant should make a declaration claiming the grace period in the application while filing the application, and submit supporting materials within two months from the date of filing.
(3) The supporting materials of international exhibitions shall be provided by the organizer of the exhibition, and indicate the date, venue, and name of the exhibition, and the exhibition date, form and contents of the invention-creation with the official seal of the organizer affixed.
III. An invention-creation for which a patent is applied for can enjoy the grace period according to Article 24(3) of the Patent Law of China, i.e., where it was first made public at a prescribed academic or technological meeting, as long as the following conditions are met.
(1) The invention-creation for which a patent is applied for is first published at the prescribed academic or technological meetings.
The prescribed academic or technological meetings are limited to the “prescribed academic or technological meetings organized or hold by the competent authorities under the State Council or national academic organizations”, excluding those held below the provincial level or with the entrustment or in the name of the departments under the State Council or national academic organizations. Disclosure at a meeting of the latter nature is prejudicial to the novelty of the content, unless there is an agreement on confidentiality being concluded on such a meeting.
Among them, in the Amendment Draft of the Guidelines for Patent Examination (Draft for Soliciting Opinions), the additional definition for the prescribed academic or technological meeting has added “academic or technological meetings held by international organizations recognized by the patent administration department under the State Council”. Although the Amendment Draft does not specify which academic meetings or technological meetings held by international organizations will be recognized by the Patent Administration Department under the State Council, it at least relaxes the restrictions on “academic meetings” or “technological meetings”. In the future, it is also possible for academic meetings or technological meetings held by international organizations to enjoy the grace period upon the approval of the patent administration department.
(2) The first publication time is within 6 months before the date of filing, and the applicant shall make a declaration claiming the grace period in the application while filing the application, and submit supporting materials within two months from the date of filing.
(3) The supporting materials of the academic or technological meetings shall be provided by the competent authority under the State Council or the national academic organizations that organize the meeting. The supporting materials shall indicate the date, venue and name of the meeting, the publication date, form and contents of the invention creation with the official seal of the organizer affixed.
IV. An invention-creation for which a patent is applied for can enjoy the grace period according to Article 24(4) of the Patent Law of China, i.e., where it was disclosed by another person without the consent of the applicant, as long as the following conditions are met.
(1) The contents of the invention-creation for which a patent is applied for is disclosed by another person without the consent of the applicant.
The disclosure made by any other person without the consent of the applicant includes the disclosure of the contents of an invention-creation by another person due to his failure to comply with the explicit or implicit confidentiality agreement, and the disclosure caused by another person who gets to know the contents of an invention-creation from the inventor or applicant by means of coercion, fraud or espionage.
(2) The time for any other person to disclose the contents of the invention-creation without the consent of the applicant is within 6 months before the date of filing, and the applicant shall make a declaration claiming the grace period in the application while filing the application, and submit supporting materials within two months from the date of filing. If the applicant knows about such disclosure after the date of filing, he shall submit a declaration requesting for the grace period with supporting materials within two months after he knows about it. The examiner may, if necessary, require the applicant to submit the relevant supporting materials within the specified time limit.
(3) The supporting materials submitted by the applicant on the disclosure of the application contents by another person shall indicate the date, form and contents of the disclosure, which shall be signed or sealed by an attester.
Example cases of enjoying grace period for novelty
Case 1
[Case Background]
Client A intended to file a patent application in China, claiming a priority of a foreign Patent Application. However, the related subject invention had already been published in academic journals (2021 IEEE 29th Annual International Symposium on Field-Programmable Custom Computing Machines (FCCM)), in May 9, 2021.
[Case Analysis & Conclusion]
Since the 2021 IEEE 29th Annual International Symposium on FCCM is not organized or held by the competent authorities under the State Council or national academic organizations, it does not comply with the related explanation in the Guidelines for Patent Examination. Therefore, it was a pity that the intended Chinese application cannot enjoy the grace period for novelty since it does not comply with the Article 24(3) of the Patent Law of China. Accordingly, the applicant loses the opportunity of filing the application in China.
Case 2
[Case Background]
Company B intended to file a patent application related to lighting technology in China by claiming a foreign priority. Before the priority date, people from Company B attended a meeting organized by the China Illuminating Engineering Society (CIES) 5 months before the priority date, and disclosed most part of the related subject invention at this meeting by publishing an article titled “A Study on Method of Evaluating Image Quality with CIECAM02”. The disclosed part of the invention was compiled into a topic of the meeting.
[Case Analysis & Conclusion]
According to our understanding, the CIES belongs to “the national academic organizations”, so the publishing of this invention related technology for the first time at the meeting organized by the CIES falls under Article 24(3) of Patent Law of China. Therefore, when we were entrusted by the applicant, Company B, to file application in China, we helped the applicant to make a declaration claiming the grace period in the application, and submitted to the CNIPA within two months from the filing date supporting materials provided by the organizer CIES and affixed with the official seal of the CIES, in which the date, venue and name of the meeting, the publication date, form and contents of the invention creation were indicated. Finally, the request for grace period for novelty was approved by the CNIPA for the patent application.
Case 3
[Case Background]
Case 3 involves a granted patent in China. After the granting of the patent in China, the patentee, Company C, made a validity evaluation of this patent in order to determine whether it can be used to initiate an infringement lawsuit against potential infringers in China. During the prior art search for this patent, the patentee found that the patent related technology had been disclosed by others in a foreign website before the priority date of this Chinese application/patent. The patentee realized that such disclosure was maliciously disclosed without any consent of the patentee before the priority date.
[Case Analysis and Conclusion]
After receiving the client, Company C’s inquiry about the situation, we told the client that the situation falls under Article 24(4) of the Patent Law of China. However, the difficulty in this situation is how to prove that the disclosure was disclosed by others without the consent of the patentee. After discussing with the client about the situation of doing research on the invention related technology, we advised the client to submit evidence that the research project was conducted under strict secret company polity and every researcher participated in the project signed an non-disclosure agreement, therefore, any disclosure happened under such situation should be regarded as malicious disclosure without any consent of the patentee. Therefore, we helped the patentee to prepare supporting materials, and within two months from the date the patentee is aware of the disclosure fact, we submitted a declaration to the CNIPA, requesting for the grace period for novelty together with supporting materials, including corresponding ways of malicious disclosure, supporting materials signed by attesters that discover said malicious disclosure by others, non-disclosure agreement signed by employees when participating in the research project of the invention related technology, and written testimony provided by the person in charge of research project. After the submission of the request, the CNIPA issued a Notification of Examination Matter, in which the examiner made the conclusion “after examination by the examiner, the reply is hereby made: this does not belong to the scope of correction so there is no need to make any correction”. Thereby, we believe that these are sufficient to demonstrate that the malicious disclosure has been recorded in the CNIPO’s file, which will be helpful for the later legal proceeding, and the related patent may enjoy the grace period for novelty.
Conclusion
The grace period for novelty is a kind of preferential treatment for invention-creations disclosed under certain circumstances before the date of filing (or priority date if applicable). Patent applicants can enjoy the preferential treatment under appropriate circumstances in accordance with the relevant provisions of the Patent Law and its implementing regulations and guidelines for patent examination. Regarding whether the grace period for novelty can be enjoyed, patent applicants can also consult with professionals to ensure that they can enjoy the greatest benefits under the Patent Law of China.
Guifen Yi
Patent Attorney
Ms. Yi joined Liu, Shen & Associates in 2008 and became a qualified patent attorney in 2009. She specializes in patent applications, re-examination and client counseling with a focus on display device, semiconductor device and process, material science, optical device, quantum dot, electrical engineering and automatic control.
Ms. Yi got her qualification as an attorney at law in 2009. She has participated in many patent applications, re-examination and client counseling every year.
Ms.Yi had a master's degree from Zhejiang University in 2006. Before joining this firm, Ms. Yi worked as a Patent engineer at Lecome Intellectual Property Agent Ltd. for two years.
Ms. Yi attended Summer School on IP in Europe organized by the Centre for International Intellectual Property Studies (CEIPI) in Strasbourg in Paris during June 27 to July 8, 2016.
