Since the amendment of Patent Law in 2008, the novelty criteria in China has been raised to “Absolute Novelty Standard”. Absolute novelty means that an invention is new if it has not been used or disclosed anywhere in the world.
Since “Absolute Novelty Standard” was adopted, some applications have already lost their novelty because of unintentional prior disclosure. In practice, attention should be paid to avoid disclosing an invention-creation before filing a related patent application. If prior disclosure of an invention-creation occurs under special circumstances, for example, the related product has been sold, used or exhibited, it is necessary to investigate whether the invention-creation indeed has been disclosed and whether the prior disclosure belongs to non-prejudicial disclosure, so as to determine whether the novelty of the invention-creation has been destroyed and whether a patent application can still be filed for it. This article will introduce the legal provisions regarding novelty and prior disclosure and discuss the impact of prior disclosure on novelty, aiming to provide some help to patent applicants.
Absolute Novelty Standard
Pursuant to the current provisions in China, “prior art” that can be used to evaluate the novelty of an application means any technology known to the public either in China or abroad before the filing date, or the priority date if priority is claimed. If the claimed technology has been disclosed anywhere in the world before the filing date or priority date, theoretically, the claimed technology has lost its novelty under the absolute novelty standard.
Even the use or disclosure of an invention by the applicant or the inventor themselves before the filing date or priority date could destroy the novelty of a Chinese application for the invention.
Manners of Prior Disclosure
Prior disclosure that affects the novelty of an invention generally means that the public could obtain the technical content of the invention through the disclosure, i.e. non-specific public becomes aware of the technical content through the disclosure.
Prior disclosure encompasses any form of public availability or accessibility of technical content anywhere in the world, including through publications, public exhibitions, public sales, public use, presentations at conferences, dissemination on the internet via text, images, videos, or any other means that enables the public to obtain or become aware of such technical content.
Prior disclosure includes disclosures made by the inventor or the applicant themselves, as well as disclosures made by others without the applicant's consent. Examples include disclosures by the inventor without the applicant's consent, disclosures by collaborating parties in breach of confidentiality agreements, or disclosures by other parties who obtained the technology through other means.
Grace Period for Novelty, i.e. Four Types of Non-prejudicial Disclosure
For some prior disclosures, the provisions about grace period for novelty may apply and thus the novelty would not be destroyed. Pursuant to the Patent Law amended in 2020 and effective from June 2021, such provisions apply to four types of non-prejudicial prior disclosure of an invention: (1) where the invention was made public for the first time for the purpose of the public interests when a state of emergency or an extraordinary situation occurred in the country; (2) where the invention was exhibited for the first time at an international exhibition sponsored or recognized by the Chinese Government; (3) where the invention was published for the first time at a prescribed academic or technological conference; (4) where the contents of the invention are divulged by another person without the consent of the applicant.
For any of the above types of prior disclosure, the applicant may file a patent application within 6 months from the date of the prior disclosure and request the grace period for novelty. It should be noted that the applicability of the grace period for novelty is subject to certain requirements, including requirements on the exhibition or conference as well as on supporting documents. Only if all the requirements are met, will the grace period for novelty be available; otherwise, there is still a risk that the novelty will be destroyed.
Avoidance of Prior Disclosure
As indicated above, to ensure the novelty of a patent application, it is imperative to avoid any disclosure of the technology to be patented in any part of the world before the patent application is filed.
If disclosure becomes necessary, it should be deferred until after the filing of the patent application, whenever possible. Even in cases involving the aforementioned four types of prior disclosure, there remains a risk that specific circumstances may fail to meet the requirements for the grace period for novelty, thereby precluding entitlement to such grace period. Therefore, prior disclosure should be meticulously avoided. In the event of the aforementioned four types of non-prejudicial prior disclosure, the patent application must be filed within six months from the disclosure, accompanied by a request for the grace period for novelty.
Cautiously Determining Whether Prior Disclosures Destroy Novelty
In practice, quite often the prior disclosure does not meet the requirements for the grace period for novelty, thereby posing a high risk of completely destroying the novelty. However, as for unavoidable prior disclosure that has happened, first it is necessary to consider whether the prior disclosure belongs to non-prejudicial disclosure and also assess whether the invention-creation indeed has been disclosed, i.e. whether the public could know or obtain the invention-creation from the prior disclosure, leading to the loss of novelty and hindering the application from getting granted.
For example, a beverage has been sold to the public, but the public cannot obtain the beverage formula from the beverage they have bought, and thus the public sale of the beverage could not destroy the novelty of the beverage formula.
For another example, a company has developed a seat buckle for installation in a car. The car has been displayed at dealerships prior to the filing date of their related patent application but was not permitted for sale to customers. Furthermore, the sample was not allowed to be disassembled to inspect its internal structure beyond visual observation of the sample. The seat buckle would remain concealed unless the plastic cover on the seat section was removed. From the display of the sample, the viewers were not able to understand the internal structure of the seat buckle, and thus the display would not destroy the novelty of the seat buckle.
In the above examples, although the corresponding products have been marketed or displayed, the sale or display of the products did not enable the public to know or obtain the technical schemes of the products. In such situations, the sale or display did not cause disclosure of the technical scheme of the products and thus would not destroy the novelty of the technical scheme of the corresponding products.
Possible Countermeasures against Prior Disclosure
As mentioned above, the technology owner should apply for a patent for their invention as early as possible to avoid any potential prior disclosure. If prior disclosure occurs accidentally, the first step should be to consult experts to assess whether the disclosure constitutes an effective disclosure of the technical content involved, i.e. whether the technical content becomes known to the unspecified public through such disclosure. Subsequently, effective remedial measures should be taken.
Given the aforementioned possibility that certain prior disclosures in practice do not destroy novelty, when considering possible countermeasures against potential prior disclosure, a technology originator needs to pay special attention to cases where they, out of concern about prior use or prior disclosure, deem their technology to lack novelty and thus do not apply for a patent for the technology. In such cases, competitors or others may, upon learning of or independently developing the same technical content, apply for a patent. Once the patent is granted, the originator of the technology is likely to encounter significant difficulties in manufacturing/selling/using products or methods incorporating the technology, for example, the patent applicant may, after obtaining the patent, warn or sue the originator of the technology for infringement, or even claim to customers that the technology is their patent and that the originator is the infringer. If a similar situation arises, the technology originator may need to spend a considerable amount of time and energy responding, for example, by challenging the validity of the patent or taking other measures; otherwise, they will lose the right to continue manufacturing/selling/using products or methods incorporating the technology they created.
Therefore, it is not advisable to give up filing a patent application merely because of a possible prior disclosure and the resulting doubts about the lack of novelty.
It is of great importance to correctly determine whether a possible prior disclosure is an effective disclosure as well as whether it may destroy novelty, and further, determine how to take effective remedial measures.
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