Grace Periods for Patent Applications in China
In 1985, the Patent Law of the People’s Republic of China and its implementing regulations entered into effect, with the latest revised implementing rules taking effect on 1 February 2010. China has experienced unprecedented economy growth, and associated with that is the amount of intellectual property, including patents, requiring protection.
Therefore, in an attempt to provide adequate protection and controls, China has also acceded to the Paris Convention for the Protection of Industrial Property, the Patent Cooperation Treaty, and is a member of the World trade Organisation and its Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
The three main areas provided for under the Patent Law include invention patents, utility model patents, and design patents. Under Article 2 of the Patent Law, invention patents are granted for new technical solutions or improvements for a product or a process; utility model patents are granted for new technical solutions proposed for the shape and structure of a product, or a combination thereof, which are fit for practical use; and design patents are granted with respect to a product where there is a new design of the shape, pattern, or the combination thereof, or the combination of the colour with the shape and patterns, which are rich in aesthetic appeal and are fit for industrial application.
The requirement of novelty is central to the concept of patents, which means it must be new; therefore there must have been no disclosure of the invention prior to the filing of the patent application made. In China, the first-to-file principle has been adopted, which takes the date of filing to determine the novelty of an invention. This has been provided for in Article 22 of the Patent law, which provides for inventions and utility models for which patents rights are to be granted shall be ones which are novel, creative and of practical use. It also further provides for the meaning of novelty, which include:
a) the invention or utility model is not an existing technology;
b) no patent application is filed by any unit or individual for any identical invention or utility model with the patent administration department under the State Council before the date of application for patent right; and
c) no identical invention or utility model is recorded in the patent application documents or the patent documentations which are published or announced after the date of application.
Furthermore, it provides for the requirement of novelty for design patents under Article 23 of the Patent Law, which include:
a) a design for which the patent right is granted is not an existing design;
b) no application is filed by any unit or individual for any identical design with the patent administration department under the State Council before the date of application for patent right; and
c) no identical design is recorded in the patent documentations announced after the date of application.
Article 23 further provides that designs for which the patent right is to be granted shall be ones which are distinctly different from the existing designs or the combinations of the features of existing designs, and that designs for which a patent right is granted shall be ones which are not in conflict with the lawful rights acquired by other prior to the date of application.
Associated with today’s rapid technological developments and competitiveness is the pressure for those who encounter breakthroughs or inventions to publish their work swiftly as their own. However, to reap the benefits of possible commercial application, they must remain silent until a patent is filed. Therefore, such conflict is resolved by a legal grace period, which is a prescribed time period after any public disclosure by the patent applicant within which a patent application may be filed without the disclosure being considered as destroying the novelty.
Grace periods are therefore promoted as they allow disclosure and access to knowledge and innovation while protecting the rights of the inventor, especially in areas where the value of publishing or disclosing information is undisputed, as grace periods provide a necessary buffer to drive access to knowledge while excusing novelty-destroying disclosures of new patentable inventions.
In China, the grace period is provided for in Article 24 of the Patent Law, which provides that within six months before the date of application, an invention (defined to cover invention patents, design patents and utility model patents) for which an application is filed for a patent does not lose its novelty if:
a) it is exhibited for the first time at an international exhibition sponsored or recognised by the Chinese government;
b) it is published for the first time at a specified academic or technological conference; and
c) its contents are divulged by others without the consent of the applicant.
With respect to Article 24 of the Patent law, Article 30 of the Implementing Rules of the Patent Law of the People’s Republic of China provides clearer guidance in relation to when disclosures are allowed. Under Article 30, an international exhibition sponsored or recognised by the Chinese government refers to the international exhibitions registered or recognised by the Bureau of International Exposition (BIE) as prescribed by the Convention Relating to International Exhibitions. The BIE is an international and intergovernmental organisation created by the Convention of Paris 1928, and was established in 1931 with the mission of regulating the World and International Exhibitions (the “Expos”). Currently, there are four main types of Expos organised under the BIE, including the World Expos, which are organised with a universal theme once every five years; the International Specialised Expos, which are organised with a specific theme between the World Expos; the Horticultural Exhibitions; and the Design Triennale of Milan.
Furthermore, under Article 11 of the Paris Convention for the Protection of Industrial Property, countries of the Union shall, in conformity with their domestic legislation, grant temporary protection to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognised international exhibitions held in the territory of any of them. Therefore, the interpretation of what an official or officially recognised international exhibition is left to the member country where the patent protection is sought.
However, the Convention Relating to International Exhibitions provides guidance on this issue, with Article 1 stating that an exhibition is a display which has as its principal purpose the education of the public, such as exhibiting the means for meeting the needs of civilization, or demonstrating the progress achieved in one or more branches of human endeavour, or showing prospects of the future, and the exhibition is international when there are more than one State partaking in the exhibition. Furthermore, under Article 2, the Convention applies to all international exhibitions except where the exhibition lasts more than three weeks, if it is a fine Arts exhibition, and if the exhibition is essentially of a commercial nature. It is also noted under Article 2 that there is a distinction between a recognised and a registered exhibition.
Under Article 3, an international exhibition with the following features shall be eligible for registration by the BIE, if:
(a) the duration of the exhibition is not less than six weeks nor more than six months;
(b) the rules governing the exhibition buildings used by the participating States is laid down in the general regulations of the exhibition, and if a tax is chargeable on the property under the legislation of the inviting State, the organisers shall be responsible for its payment, and services actually rendered in accordance with the regulations approved by the BIE shall qualify for reimbursement; and
(c) from 1 January 1995, the interval between two registered exhibitions is at least five years, although an exception applies is if there is a celebration of a special event of international importance.
Under Article 4, an international exhibition with the following features shall be eligible for recognition by the BIE, if:
(a) the duration of the exhibition is not less than three weeks nor more than three months;
(b) a definite theme is illustrated;
(c) the total surface area does not exceed 25 ha;
(d) the premises constructed by the organiser, free of all rents, charges, taxes and expenses other than those representing services rendered, is allocated to the participating States, and the largest space allocated to a State does not exceed 1000 metres square, however, BIE may authorise a derogation from the requirement that premises be allocated free of charge if the economic and financial situation of the organisation State justifies this derogation;
(e) one recognised exhibition, pursuant to subparagraph (a) of Article 4, is held between two registered exhibitions, and
(f) if one registered exhibition or exhibition recognised pursuant to subparagraph (a) of Article 4 is held in the same year.
Academic or technological conference
Under Article 30, an academic or technological conference refers to any academic or technological meeting organised by a competent department concerned under the State Council or by a national academic or technological association. With respect to this, the China Association for Science and Technology (CAST) is the largest national non-governmental organisation of scientific and technological workers in China, which serves as the bridge linking the government to the country’s science and technology community. Through its member societies, which is 201 at the last count, and includes societies such as the Chinese Mathematics Society, the Chinese Environmental Mutagen Society, and the Chinese Society of Space Science, and local branches nationwide, the organisation maintain close ties with those working in the fields of science and technology. Therefore, a disclosure made under subparagraph (b) of Article 24 will have to be made by one of the National Societies under the Association, or otherwise a competent department under the State Council.
Therefore, an applicant shall, when filing a patent application, make a declaration and, within a time limit of two months from the date of filing, submit certifying documents issued by the entity which organised the international exhibition or academic or technological meeting, and confirm the disclosure.
Therefore, although China provides a grace period within which the public disclosure of an invention is acceptable without affecting the validity of a subsequent patent application, it is limited to the circumstances for which it is provided, which stipulate a prior disclosure not set out under Article 24 will destroy the novelty of an invention, therefore restricting the applicant’s ability to freely disclose to the public.
The grace period in the United States of America
The US Leahy-Smith America Invents Act provides for a grace period under section 102(b), which provides that a disclosure made 12 months or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention if:
a) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
b) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
While the US patent law used to require absolute novelty, the system has evolved to balance the policy needs of users to allow pre-filing disclosures. In this, the US recognises the need to balance the strict nature of the novelty requirement with the demands of a healthy patent system to make it accessible to all users by allowing pre-filing disclosures.
The grace period in Europe
Under the European Patent Convention 2000 (EPC), the grace period is provided for under Article 55, which states that a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequences of:
a) an evident abuse in relation to the applicant or his legal predecessor, or;
b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognised, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.
Furthermore, under this Article, the exception for abusive disclosure by a third party is limited in that it requires a deliberate intent to harm the patent applicant and does not apply to mere negligence or breaches of confidentiality. It lacks a mechanism to protect unsophisticated applicants, who disclose the invention by need or mistake, prior to filing a patent application or entering into a non-disclosure agreement
Therefore the grace period provided for by the EPC is of extremely limited practical effect. As a result, those in Europe lack the same flexibility as others have in other competitive markets for innovation, and may forfeit their chances of obtaining patent protection by disclosing their invention before filing for a patent application. Consequently, it is procedure for those in Europe to make a filing in the US to take advantage of the grace period, but this is inefficient due the expenses involved.
ABOUT THE AUTHOR: Matthew Murphy
Matthew Murphy is a Partner in the MMLC Group.
Matthew would like to thank Joyce Chng for her contributions to this article.
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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.