One Case a Day | China: Novelty Grace Period Starting Point - (2023) Supreme Court Zhixing Zhong No. 490

Case Introduction

Today's case involves the novelty grace period. This judgment clarifies that the relevant provisions of the Patent Examination Guidelines—"If the applicant learns of the situation after the filing date, they should submit a declaration requesting the novelty grace period and provide supporting evidence within two months of learning of the situation"—apply to invalidation proceedings. "Knowing or should have known" refers to the subject's subjective awareness of the occurrence of an objective fact, not awareness of the legal consequences arising from that fact. The starting point for the period within which a patent applicant or patentee must submit a declaration requesting the novelty grace period should be the time when they subjectively know or should have known the objective fact that others have disclosed their invention without consent, not the time when they learn that this objective fact has been recognized by the State Intellectual Property Office or a court as constituting a disclosure under the Patent Law.

Case Information

• Application Number: 201830409294.2
• Invention Title: Vibration Massage Gun
• Priority Date: February 22, 2018
• Filing Date: July 27, 2018
• Invalidation Decision No.: No. 44539
• Administrative Reconsideration Decision: Guozhifuzhuan [2021] No. 0001
• First Instance Judgment: (2021) Jing 73 Xing Chu No. 12045
• Second Instance Judgment: (2023) Supreme Court Zhixing Zhong No. 490
• Judgment Date: December 21, 2024
• Evidence 1.2.1: A live broadcast video of the second quarter of the "Cavaliers vs. Celtics" NBA regular season game on February 12, 2018, published on the "Tencent Sports" official website. From 7:20 to 7:38, it shows a staff member using a vibration massage gun to massage the knee of NBA Cavaliers player LeBron James.

Key Points of the Case

After receiving the invalidation request materials, including Evidence 1.2.1, the patentee (Company H) submitted a statement of opinion on November 18, 2019, arguing that Evidence 1.2 differed significantly from the patent.

On May 19, 2020, the State Intellectual Property Office issued Invalidation Decision No. 44539, declaring the entire patent right invalid.

On July 10, 2020, the patentee submitted a declaration for the novelty grace period to the State Intellectual Property Office. The SIPO held that: the patentee had learned of the existence of Evidence 1.2.1 before November 18, 2019, but did not claim until July 28, 2020, that Evidence 1.2.1 constituted content disclosed by others without its consent, and submitted a declaration requesting the novelty grace period. This date exceeded the two-month period stipulated in the Patent Examination Guidelines: "If the applicant learns of the situation after the filing date, they should submit a declaration requesting the novelty grace period and provide supporting evidence within two months of learning of the situation."

The patentee appealed, arguing, among other things, that the relevant provisions of the Examination Guidelines only applied to patent applications still in the application stage before grant, not to patents already granted; and that the starting point for learning that others had disclosed the patent content without consent should at least be the date of receiving Invalidation Decision No. 44539, not the date of submitting the response.

The first-instance court held: For situations where the patentee only learns during invalidation proceedings that "the invention was disclosed by others without the applicant's consent within six months before the filing date," if no review is conducted, it may lead to the patent being declared invalid, which would contradict the legislative intent of the Patent Law Implementation Rules. Therefore, whether the patent enjoys the novelty grace period should be reviewed during invalidation proceedings. The patentee had received the relevant evidence no later than November 18, 2019.

The second-instance court held: This case involves the issue of the period within which a patent applicant or patentee must submit a declaration requesting the novelty grace period due to others disclosing the invention without consent.

(I) How to Determine the Period for Submitting the Declaration

According to Article 24(3) of the Patent Law as amended in 2008, an invention for which a patent is applied does not lose its novelty if, within six months before the filing date, it was disclosed by others without the consent of the applicant. Article 30(4) of the Patent Law Implementation Rules revised in 2010 states: "Where an invention for which a patent is applied falls under the circumstances specified in Article 24(3) of the Patent Law, the patent administration department under the State Council may, when necessary, require the applicant to submit proof documents within a specified time limit." Article 30(5) states: "Where the applicant fails to submit a declaration and proof documents in accordance with paragraph 3 of this Article, or fails to submit proof documents within the specified time limit in accordance with paragraph 4 of this Article, the application does not apply to the provisions of Article 24 of the Patent Law." The above laws and regulations do not explicitly specify a specific period for submitting such a declaration. In this regard, reference is made to the provisions in Part I, Chapter 1 of the Patent Examination Guidelines: "Where an invention for which a patent is applied was disclosed by others without the consent of the applicant within six months before the filing date, if the applicant learned of it before the filing date, they should declare it in the request at the time of filing the patent application and submit proof documents within two months from the filing date. If the applicant learns of it after the filing date, they should submit a declaration requesting the novelty grace period and provide supporting evidence within two months of learning of the situation." Therefore, if a patent applicant or patentee learns after the filing date that others have disclosed the invention without consent, they should submit the declaration within two months of learning of the situation. Exceeding this period means the exception under Patent Law Article 24 cannot apply.

Regarding Company H's argument that the above period provision is in the "Preliminary Examination" part of the Guidelines and does not apply to invalidation proceedings, the court analyzed and held as follows: First, the purpose of setting a two-month period for submitting the declaration is to urge patent applicants/patentees to promptly fulfill the necessary declaration obligation while claiming the right to the novelty grace period, thereby safeguarding their legitimate rights in their inventions while providing stable expectations for the public. The purpose of this institutional design does not differ based on the stage of examination. Second, the Guidelines provision on the submission period is only demarcated by the filing date and is not limited to the "preliminary examination" stage for grant. If a patentee learns after grant that others have disclosed the invention without consent, it also falls under the circumstance of "learning after the filing date" in this provision. Finally, according to Article 65 of the Patent Law Implementation Rules, lack of novelty of a granted invention is a ground for invalidation. Whether to accept the novelty grace period declaration directly relates to the determination of prior art/design and whether the involved invention possesses novelty. Since laws, regulations, and the Guidelines do not contain contrary provisions regarding the submission period during invalidation proceedings, the aforementioned provision in the Guidelines should apply. Company H's argument lacks sufficient basis and is not supported.

(II) Whether Company H's Declaration Exceeded the Time Limit

"Knowing or should have known" refers to the subject's subjective awareness of the occurrence of an objective fact, not awareness of the legal consequences arising from that fact. The starting point for the period within which a patent applicant or patentee must submit a declaration requesting the novelty grace period should be the time when they subjectively know or should have known the objective fact that others have disclosed their invention without consent, not the time when they learn that this objective fact has been recognized by the State Intellectual Property Office or a court as constituting a disclosure under the Patent Law. In this case, the SIPO forwarded Bo Company's supplementary opinions and Evidence 1.2 to Company H on October 16, 2019. Company H submitted a statement of opinion to the SIPO on November 18, 2019, responding to the invalidation request. It is evident that Company H knew no later than November 18, 2019, that its massage gun product was used in an NBA public game venue and broadcast live, and also knew the content of the Weibo post involved in Evidence 1.2. Company H claimed that the use in the NBA venue constituted disclosure by others without consent and requested the novelty grace period based on this. It should have submitted the declaration within two months from November 18, 2019, at the latest. Company H submitted the declaration in July 2020, exceeding this period.