▍ Patent practice - Grace Period for Novelty of Chinese Patents

Written by Carrie LIANG | Feb 1 2023

Recently, we received some questions related to the grace period for novelty of Chinese Patents. Since this has different rules in different countries, we would be happy to introduce the related rules of grace period for novelty in China in two scenarios.

Scenario 1

CNIPA cites a thesis as prior art in the office action. The thesis was first published by the applicant in the international journal conference six months prior to the filing date of the Chinese invention. Can the applicant enjoy grace period for novelty of the Chinese invention? 

Answer

The situation above does not comply with Article 24 of the Chinese Patent Law as in practice. “A prescribed academic or technological meeting” refers to academic or technical conference organized by the relevant authorities of the Chinese State Council or national academic societies. And the publication of relevant scientific and technological achievements in academic journals does not enjoy grace period. 

In addition, if the applicant requests the grace period for novelty based on Article 24, he should declare it at the time of filing the application and submit supporting documents within two months from the filing date. Otherwise, he should bear the loss results from failing to file a request for grace period concerning novelty.

Scenario 2

Company A would like to file a Chinese design, but the design was disclosed through a Youtube video in November 2021. The disclosure of this design can not enjoy grace period for novelty. Does the disclosure of this design influence its Chinese design application?

Answer

Youtube is not available in China without a VPN. During the process of examination or invalidation of a Chinese design, usually neither the examiner nor a third party could cite the design disclosed through Youtube as a prior design which influences a Chinese design application.

In conclusion, according to the Chinese practice, though the applicant has disclosed the design through a Youtube video in November 2021, it is highly possible that the protection for the design in China would not be influenced. The applicant can still protect his design by filing a Chinese design application on the basis of an EU priority before the six-month priority deadline.

Reference: Pursuant to the Article 24 of the Chinese Patent Law, an invention-creation for which a patent is applied for does not lose its novelty where, within six months before the date of filing, one of the following events occurred:

(1)  where it was first disclosed for the purpose of public interest when a national emergency or extraordinary state of affairs occurs;

(2)  where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government;

(3)  where it was first made public at a prescribed academic or technological meeting;

(4)  where it was disclosed by any person without the consent of the applicant.

The above regulations can also apply to Chinese utility model and design.