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. However, in practice, it should be noted that sometimes although an invention seems to have been "disclosed", for example it has been used or exhibited, in fact its novelty may not be destroyed and a patent application for it can still be filed. 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" which 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 itself before the filing date or priority date could destroy the novelty of a Chinese application for the invention.
Manners of Prior Disclosure
Prior disclosure which 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 applicant or the inventor itself, 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.
Four Types of Non-prejudicialDisclosure
In China, there are four types of non-prejudicialdisclosure which do not destroy the novelty of the application. Pursuant to the Patent Law amended in 2020 and effective from June 2021, such provisions apply to four types of 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 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 disclosure. It should be noted that the applicability is also related to the time of when the request is filed and it also has certain requirements on the exhibition or conference as well as on supporting documents. Only if all the requirements are met, will the prior disclosure deemed as non-prejudicial disclosure for novelty; 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 prior 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, thereby precluding entitlement to such grace period. Therefore, prior disclosure should be meticulously avoided. In the event of unavoidable prior disclosure, the patent application must be filed within six months from the disclosure, accompanied by the supporting documents.
Some Prior Disclosures Do Not Destroy Novelty
In practice, quite often the prior disclosure does not meet the requirements as set forth by the CNIPA, thereby the prior disclosure would destroy novelty of the application. However, we would like to advise that in some situations, prior disclosure does not necessarily hinder a patent application from being granted. Here we would like to list a few examples:
- A company has developed an improved method for tea processing and intends to apply for a patent for the method. However, they found that their R&D team had already conducted limited public trial sales of tea processed with the corresponding method to gauge customer acceptance of the new product. The company is concerned that this small-scale trial sale may compromise the novelty of the method and adversely affect their patent application for this method.
- 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 from the exterior. The seat buckle would remain concealed unless the plastic cover on the seat section was removed.
- A company has developed an autofocus optical microscope that is not yet available for sale, but the microscope is available for use with a fee. The company recently implemented a software update of the microscope that improved the microscope's internal autofocus, but even experts couldn't detect any changes from the outside of the device. The company is now considering filing a patent application for the optical microscope.
In the above cases, although the corresponding products have been marketed, displayed, or accessible to the public, the sale or display of the products did not enable the public to know the technical schemes that are to be patented. In such situations, the sale or display did not cause disclosure of the technical scheme to be patented and thus would not destroy the novelty of the technical scheme of the corresponding product or method claimed in the patent application.
Examination and Subsequent Procedures of Cases Involving Prior Disclosure
If the owner of a technology applies for a patent in China, during examination, generally the examiners search for prior art in databases of patent or non-patent publications and on the internet. In cases of prior disclosure, publications and online disclosures are relatively easy to retrieve. However, it is difficult for examiners to discover or retrieve disclosures made through public exhibitions, public use, and other means.
If no one proves or can prove to the CNIPA that the claimed technology has been disclosed (that is, it can be known to the non-specific public) before the filing date or priority date, and other conditions for grant are met, the CNIPA may consider that the application meets the conditions for granting a patent.
In subsequent procedures, if someone tries to invalidate the patent on the grounds that the invention had been disclosed to the public before the filing date and thus it is not novel, the petitioner must provide sufficient evidence to prove that the related technology had been disclosed before the filing date or priority date.
In the case that the disclosure of the product or method involved in the technology before the filing date does not result in its technical scheme being known to the public, the petitioner usually cannot provide sufficient evidence to invalidate such patent. In the absence of sufficient evidence, the patent will remain valid.
Possible Countermeasures against Prior Disclosure
As mentioned above, the technology owner should apply for a patent for the invention as soon 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, the inventor or the technology owner 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 real inventor or the owner of the technology is likely to encounter significant difficulties in manufacturing/selling/using products or methods incorporating the technology, for example, the patent applicant who is not the inventor may, after obtaining the patent, warn or sue the real inventor or the owner of the technology for infringement, or even claim to customers that the technology is their patent and that the real inventor is the infringer. If a similar situation arises, the real inventor will 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 their own invention.
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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
