In an administrative appeal case, the Supreme People's Court clarified that a declaration for a novelty grace period is directly related to the determination of prior art or prior design, as well as to the assessment of whether an invention-creation possesses novelty. Such declarations apply not only during preliminary examination but also in post-grant proceedings. The Court held that when a patent applicant or patentee files such a declaration on the grounds that the invention-creation's content was disclosed by others without their consent, the starting point for the declaration period is the time when the applicant or patentee subjectively knew or should have known the objective fact of this unauthorized disclosure. This starting point is not the later time when the patentee learned that the fact had been formally recognized by the China National Intellectual Property Administration (CNIPA) or a people's court as constituting a public disclosure under the Patent Law.
This article discusses an administrative reconsideration decision. The facts of the case are briefly summarized as the following:
Company A owned the design patent at issue, titled "Vibration Massage Gun." On July 24, 2019, Company B filed a request to invalidate this patent with the CNIPA. The CNIPA accepted the request and subsequently forwarded Company B's supplementary opinions and evidence to Company A on October 16, 2019. The submitted evidence included video footage from an NBA game depicting a staff member using a vibration massage gun on Cleveland Cavaliers player LeBron James's knee, as well as promotional posts on Weibo. These posts, from "Sina NBA" and a US company's official Weibo account, utilized GIFs from the video to market the product as the "same massage gun as LeBron James," accompanied by related product photographs. On November 18, 2019, Company A responded with a statement contending that the product design shown in the evidence was substantially different from its patented design and therefore did not constitute a public disclosure of the patent. On May 19, 2020, the CNIPA issued its decision, declaring the patent entirely invalid.
On July 10 and 28, 2020, Company A submitted a novelty grace period declaration and a request for rectification to the CNIPA. The CNIPA responded with an office notice indicating it could not accept Company A's request. Dissatisfied, Company A filed an application for administrative reconsideration with the CNIPA. In its reconsideration decision, the CNIPA determined that Company A had already become aware of the existence of the invalidation evidence prior to November 18, 2019. Nevertheless, Company A only asserted on July 28, 2020, that the evidence constituted an unauthorized disclosure by others and filed the corresponding grace period declaration. This filing date fell outside the two-month period prescribed by the Patent Examination Guidelines. Consequently, the CNIPA rejected Company A's request for reconsideration.
Company A disagreed and filed a lawsuit with the first-instance court, requesting the court to revoke the reconsideration decision and order the CNIPA to make a new one.
The first-instance court dismissed Company A's claims. The court ruled that the issue of whether a patent is entitled to a novelty grace period must be examined as part of the invalidation proceedings. It further held that, pursuant to the Patent Examination Guidelines, if an applicant becomes aware of that the content was disclosed by others without the consent of the applicant after the patent's filing date, a grace period declaration along with supporting evidence must be submitted within two months of gaining such awareness. The court clarified that discovering these circumstances during invalidation proceedings constitutes learning of them "after the filing date" and is therefore subject to the two-month deadline. Since Company A failed to file the required declaration within two months of learning about the evidence, its claim was time-barred, and Company A was liable for the consequences of missing the deadline.
Company A appealed the decision. The Supreme People's Court issued a final judgment dismissing the appeal and upholding the original ruling.
In its effective second-instance judgment, the court identified the core issues on appeal as: 1) how to determine the deadline for a patent applicant or patentee to file a declaration claiming a novelty grace period; and 2) whether Company A’s filing of such a declaration has exceeded the deadline.
According to Article 24(3) of the Patent Law (2008 amendment), an invention-creation for which a patent is applied for does not lose its novelty where, within six months before the date of filing, it was disclosed by any person without the consent of the applicant.
Rule 30(4) of the Implementing Regulations of the Patent Law revised in 2010 stipulates: " Where any invention-creation for which a patent is applied falls under the provisions of Article 24, subparagraph (3) of the Patent Law, the patent administration department under the State Council may, when it deems necessary, require the applicant to submit the relevant certifying documents within the specified time limit."
Paragraph (5) of the same Rule provides: "Where the applicant fails to make a declaration and submit certifying documents as required in paragraph three of this Rule, or fails to submit certifying documents within the specified time limit as required in paragraph four of this Rule, the provisions of Article 24 of the Patent Law shall not apply to the application."
Neither the Patent Law nor its Implementing Regulations explicitly sets a specific deadline for a patent applicant or patentee to file a novelty grace period declaration on the grounds of unauthorized disclosure of the invention-creation's content by others.
Therefore, reference should be made to the provision in Part I, Chapter 1 of the Patent Examination Guidelines, which states:
Where, within six months before the filing date, the content of an invention-creation for which a patent is applied for was disclosed by any person without the consent of the applicant, if the applicant learned of it before the filing date, a declaration shall be made in the request at the time of filing the patent application, and supporting documents shall be submitted within two months from the filing date. If the applicant learned of it after the filing date, a declaration for a novelty grace period shall be made within two months from the date of learning of the situation, accompanied by supporting documents.
Accordingly, when a patent applicant or patentee learns, after the filing date, that the content of the invention-creation was disclosed by others without their consent, they must file a declaration for a novelty grace period within two months from the date of gaining such knowledge. If this period is exceeded, the exception for non-loss of novelty under Article 24 of the Patent Law shall not apply.
The purpose of setting a two-month deadline for filing a novelty grace period declaration is to encourage patent applicants or patentees to act promptly in fulfilling their declaratory duty when claiming this right to the grace period. This aims to protect the right holders legitimate interests over the invention-creation, while simultaneously providing a certainty or predictability for the public. This underlying rationale remains consistent, irrespective of whether the matter arises during the examination of a patent application or after the patent has been granted.
The relevant rule in the Patent Examination Guidelines uses the filing date as the sole criterion for determining the deadline; it is not limited to the "preliminary examination" phase prior to grant. Consequently, if a patentee becomes aware, after the patent is granted, that the invention-creations content was disclosed without consent, this scenario equally qualifies as "learning after the filing date" under the provision. Thus, the aforementioned rules in the Patent Examination Guidelines should apply.
In this case, Company A contended on appeal that the starting point for the declaration period should be the date it received the invalidation decision, arguing that it had reasonable grounds prior to that date to believe the evidence did not constitute a public disclosure under the Patent Law.
The second-instance court dismissed this argument and determined that: the legal standard of "knew or should have known" pertains to a party's subjective awareness of the occurrence of an objective fact, not awareness of the legal consequences arising from that fact. Consequently, the starting point for the declaration period should be when the applicant or patentee subjectively knew or should have known the objective fact of the unauthorized disclosure itself, not when they later learned that this fact had been formally recognized by the authorities, such as the patent administration department under the State Council or the people's court, as a public disclosure under the Patent Law.
On October 16, 2019, the CNIPA formally served the invalidation evidence to Company A. Company A, in turn, submitted its responsive observation to the CNIPA on November 18, 2019. This exchange establishes definitively that, no later than November 18, 2019, Company A was in full aware of the content of the evidence.
Since Company A subsequently claimed that the use shown in the NBA footage constituted an unauthorized disclosure of its patent content and sought for a novelty grace period on that ground, it was obligated to file the declaration by January 18, 2020 (that is, within two months of November 18, 2019). Company A, however, did not submit its declaration until July 2020, which was well beyond this deadline. Therefore, the CNIPA's refusal to accept the declaration was correct and proper.
Through this judgment, the Supreme People's Court has clarified that the two-month deadline for filing a novelty grace period declaration, as set forth in the Patent Examination Guidelines, starts from the moment the patent holder knows or should have known the objective fact of an unauthorized disclosure by others. This deadline is fixed, and it does not change based on whether the patent is under invalidation review or has already been granted, and it does not accommodate any delay for "awaiting an official final determination" of the disclosure's legal status. The court's strict adherence to this timeline is essential for preserving the predictability or certainty of the patent system and balancing it with the public interest.
This ruling serves as a reminder to all right holders: the requirement to file a novelty grace period declaration is governed by a rigid statutory deadline. Failure to act within this prescribed window results in an irrecoverable loss of rights to claim the grace period. No subsequent action or legal remedy can compensate for the failure to take timely, complete, and effective actions within this prescribed period.
(2023) Zui Gao Fa Zhi Xing Zhong No. 490
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