The fourth revision of the Chinese Patent Law, which will be formally implemented on June 1, 2021 adds an applicable circumstance of non-loss of novelty. This article will introduce the applicable circumstances of non-loss of novelty and how to requests the grace period of non-loss of novelty. Hope this article will enable applicants to deepen their understanding of the grace period for non-loss of novelty, and use the grace period to protect rights and interests reasonably.
 

1. What is the grace period of non-loss of novelty

The Chinese Patent Law not only establishes the priority of patent applications, but also stipulates the grace period of non-loss of novelty to protect the interests of the applicants.
 
Specifically, according to the Patent Law Article 24, within six months before the filing date (or priority date), an invention for which an application is filed for a patent does not lose its novelty under any of the following circumstances:

(1) It is published for the first time for the purpose of public interest when the country is in an emergency or extraordinary situation

(2) It is exhibited for the first time at an international exhibition sponsored or recognized by the Chinese Government;

(3) It is published for the first time at a specified academic or technological conference; and

(4) Its contents are divulged by others without the consent of the applicant.
 
In order to respond to emergencies and extraordinary times such as epidemic prevention and control, promote the timely application of related inventions and creations in disease treatment, and solve public health problems, the circumstance (1) was added in the amendment of patent law this time.
 
2. The difference between grace period and priority

The effect of the grace period non-loss of  novelty is different from the priority. The grace period does not enable the filing date of a patent to be retroactive to the publication date, that is, the day on which no loss of novelty occurs (i.e., the publication date) is not equal to the filing date; and the priority means that after the applicant filed an application for the first time, if he filed another patent application on the same title within the specified time limit, the filing date of the first application can be regarded as the subsequent application’s filing date.
 
Besides, the grace period is territorial. The grace period in the patent law is limited to the application of Chinese patents, and it does not affect filing patents in other countries or regions.
 
3. The declaration to request for the grace period

According to the original provision of Rules for the Implementation of the Patent Law Article 30, the proposed amendments to the Rules for the Implementation of the Patent Law issued recently and Guidelines for Patent Examination, the applicants who request a grace period for novelty must perform certain procedures.
 
If the patented invention-creation involves the circumstances listed in the Patent Law Article 24 Item (2) or Item (3), the applicant shall make a declaration when filing the patent application and submit the certified documents within two months from the filing date. And the certified documents should be issued by the organization unit of the international exhibition or the academic conference or the technical conference to prove the relevant invention-creation have been exhibited or published, and the dates of exhibits or publications.
 
Where a patented invention-creation involves the circumstances listed in the Patent Law Article 24 Item (1) or Item (4), CNIPA may request the applicant to file supporting documents in the specified time limit when it deems it necessary. Specifically, in the circumstance of Article 24 Item (4) of the Patent Law, if the applicant knows the circumstance before the filing date, he shall make a declaration when filing the application, and submit certifying materials within two months after the filing date; If the applicant knows about it after the filing date, he should submit a declaration to request for the grace period concerning novelty with certifying materials within two months after he knows it. There are currently no specific regulations to stipulate the specific requirements for the submission of declaration and certifying materials when it involves the case in Item (1) of Article 24 of the Patent Law.
 
Thus, if the applicant wants to enjoy the grace period stipulated in Article 24 of the Patent Law, the applicant must file the declaration and relevant certifying materials to declare within the prescribed time limit. Otherwise, it will not be able to enjoy the prescribed novelty grace period.
 
4. The requirements for the certifying materials

To qualify for the grace period, in addition to filing the certifying materials within the specified time limit, the certifying materials also need to meet the following requirements.
 
(1) The certifying materials must have legal effect and need to be signed. For example, the official seal of the organizer of an international exhibition sponsored or recognized by the Chinese government.

(2) The certifying materials need to reflect the time of the incident, that is, the date of the relevant meeting or the date when other people leaked its content without the the applicant’s consent or the date was first disclosed in the public interest.

(3) The certifying materials need explain the circumstance in which related invention-creation has been first disclosed or leaked, such as the content of the first publication.
 
To sum up, the grace period of non-loss of novelty is a remedy or preferential treatment for an invention-creation disclosed in a specific way before the filing date, which can protect the applicant's rights maximally and reduce the risk of early disclosure to a certain extent. And the applicant shall meet the relevant provisions of the Patent Law when filing the declaration of grace period. Besides, the applicants should learn to use the grace period's legal weapon to ensure that their interests are not lost.