Generally speaking, disclosures made before the filing date can affect the novelty and inventiveness of a patent application. However, there is an “exception” called the “grace period” which can mitigate the adverse effects of pre-filing disclosures under certain conditions.
I. Provisions of Article 24 of the “Patent Law of the People’s Republic of China”
According to Article 24 of the Patent Law, an invention-creation will not lose its novelty if, within six months before the filing date, one of the following situations occurs:
- It was first disclosed for the purpose of public interest in a state of emergency or extraordinary circumstances in the country;
- It was first exhibited at an international exhibition hosted or recognized by the Chinese government;
- It was first published at a prescribed academic or technical conference;
- It was disclosed without the consent of the applicant by another person.
First Disclosure for Public Interest During an Emergency or Extraordinary Situation
If an invention-creation is first disclosed for public interest during a state of emergency or extraordinary circumstances in the country within six months before the filing date, and the applicant is aware of it before the filing date, they should declare it in the request form at the time of filing the patent application and submit supporting documents within two months from the filing date. If the applicant becomes aware of the situation after the filing date, they should declare the grace period for novelty within two months from the date they become aware and attach supporting documents. The examiner may request the applicant to submit supporting documents within a specified period if deemed necessary. If the applicant becomes aware of it only after receiving the notification from the Patent Office, they should submit a response within the specified period in the notification along with the supporting documents. The supporting documents for disclosures made for public interest during an emergency or extraordinary situation should be issued by relevant departments of the provincial or higher-level government. The documents should specify the reason for the public interest disclosure, the date, the form, and content of the disclosure, and bear the official seal.
First Exhibition at an International Exhibition Hosted or Recognized by the Chinese Government
An international exhibition hosted by the Chinese government includes those organized by the State Council, ministries, or other agencies or local governments approved by the State Council. An international exhibition recognized by the Chinese government refers to those registered or recognized by the Bureau of International Expositions under the International Exhibitions Convention. An international exhibition should include exhibits from both the host country and foreign countries. If an invention-creation is first exhibited at such an exhibition within six months before the filing date, and the applicant requests the grace period for novelty, they should declare it in the request form at the time of filing the patent application and submit supporting documents within two months from the filing date. The supporting documents should be issued by the exhibition organizer or organizing committee, specifying the exhibition dates, location, name, and the dates, form, and content of the exhibited invention-creation, and bear the official seal.
First Publication at a Prescribed Academic or Technical Conference
A prescribed academic or technical conference refers to those organized by relevant departments of the State Council, national academic organizations, or international organizations recognized by relevant departments of the State Council. It does not include conferences organized below the provincial level or those held in the name of departments under the State Council or national academic organizations. Public disclosures at such conferences will lead to a loss of novelty unless the conference itself has a confidentiality agreement. If an invention-creation is first published at such a conference within six months before the filing date, and the applicant requests the grace period for novelty, they should declare it in the request form at the time of filing the patent application and submit supporting documents within two months from the filing date. The supporting documents should be issued by the relevant departments of the State Council or national academic organizations organizing the conference, specifying the conference dates, location, name, and the dates, form, and content of the disclosed invention-creation, and bear the official seal.
Disclosure Without the Applicant’s Consent
Disclosure without the applicant’s consent includes instances where someone does not adhere to explicit or implicit confidentiality agreements and discloses the invention-creation, as well as instances where someone learns about the invention-creation through threats, fraud, or espionage and then discloses it. If an invention-creation is disclosed without the applicant’s consent within six months before the filing date, and the applicant is aware of it before the filing date, they should declare it in the request form at the time of filing the patent application and submit supporting documents within two months from the filing date. If the applicant becomes aware of it after the filing date, they should declare the grace period for novelty within two months from the date they become aware and attach supporting documents. The examiner may request the applicant to submit supporting documents within a specified period if deemed necessary. If the applicant becomes aware of it only after receiving the notification from the Patent Office, they should submit a response within the specified period in the notification along with the supporting documents. The supporting documents should specify the date, method, and content of the disclosure, and be signed or stamped by the certifier. If the applicant requests the grace period for novelty but does not meet the above requirements, the examiner will issue a notice deeming the request for the grace period invalid.
II. Provisions of Chapter 3, Part II of the “Patent Examination Guidelines 2010”
According to the guidelines, if an invention-creation is disclosed within six months before the filing date due to any of the four circumstances specified in Article 24 of the Patent Law, it does not lose its novelty. These circumstances do not constitute prior art affecting the application. The six-month period is referred to as the grace period or favorable period.
The grace period and the effect of priority are different. The grace period merely treats certain disclosures by the applicant (including the inventor) or certain disclosures made by others who learned about the invention-creation through lawful or unlawful means from the applicant or inventor as non-prejudicial to the novelty and inventiveness of the patent application. In reality, the invention-creation has become prior art upon disclosure, but such disclosure within a certain period is not considered prior art affecting the novelty and inventiveness of the applicant’s patent application. This does not mean that the disclosure date is regarded as the filing date of the patent application. Therefore, if someone else independently makes the same invention-creation during the period from the disclosure to the filing date and files a patent application before the applicant, the applicant cannot obtain the patent right based on the first-to-file principle.
Since the applicant’s (including the inventor’s) disclosure makes the invention-creation prior art, someone else’s application lacks novelty and cannot obtain the patent right either.
If an invention-creation is disclosed again within six months before the filing date, after being disclosed due to any of the circumstances specified in Article 24 of the Patent Law, and the subsequent disclosure does not fall within the above four circumstances, the application will lose novelty due to this subsequent disclosure. If the subsequent disclosure falls within the above four circumstances, the application does not lose novelty, but the grace period is calculated from the first disclosure.
If an invention-creation is first disclosed for public interest during an emergency or extraordinary situation in the country, and someone else discloses it again after learning about it, it is considered as the situation specified in Article 24(1) of the Patent Law. If the content is disclosed without the applicant’s consent, and a third party discloses it again after learning about it, it is considered as the situation specified in Article 24(4) of the Patent Law. If a patent application involves situations specified in Article 24(2) or (3) of the Patent Law, and the applicant fails to declare and submit supporting documents according to Article 33(3) of the Implementing Regulations of the Patent Law, the application cannot enjoy the grace period for novelty specified in Article 24 of the Patent Law.
If a patent application involves situations specified in Article 24(1) or (4) of the Patent Law, and the applicant becomes aware of it only after receiving the notification from the Patent Office, they should submit a response within the specified period in the notification along with the supporting documents. The Patent Office may also require the applicant to submit supporting documents to verify the date and substantive content of the disclosed circumstances when necessary.
If the applicant fails to submit supporting documents within the specified period according to Article 33(4) of the Implementing Regulations of the Patent Law, the application cannot enjoy the grace period for novelty specified in Article 24 of the Patent Law. If there is a dispute over the application of Article 24 of the Patent Law, the party asserting its validity has the burden of proof or must provide convincing explanations.
III. Summary
In summary, the “exception” effect of China’s novelty grace period is relatively weak according to the above provisions:
- The duration is only six months;
- It is limited to a few situations specified in Article 24 of the Chinese Patent Law.
If the situations specified in Article 24 of the Chinese Patent Law result in outcomes that do not belong to any of the specified circumstances, the “exception” protection cannot continue to apply.
It is important to note that for innovators, China’s novelty grace period is only a post-facto remedy for disclosures of invention-creation by specific means before the filing date. Therefore, it is crucial to adhere to the principle of “preparation before action” and preferably file the patent application before exhibiting the invention.