*AI-generated translation, for reference only.

Recently, the Intellectual Property Court of the Supreme People's Court rendered a final judgment in an administrative case concerning other disputes over a design patent, holding that where a patent applicant or patentee files a declaration requesting a grace period for non-loss of novelty on the ground that another person disclosed the contents of the invention-creation without its consent, such declaration shall be filed within two months from the date on which the patent applicant or patentee knew or should have known of the fact of disclosure. The starting point for filing such declaration shall be the time when the patent applicant or patentee subjectively knew or should have known of the objective fact that another person had disclosed the contents of the invention-creation without its consent, rather than the time when it became aware that such objective fact had been determined by the patent administration department under the State Council or by a people's court as constituting disclosure within the meaning of the Patent Law.

Hai [REDACTED] Company was the patentee of a design patent titled "Vibration Massage Gun" (hereinafter referred to as the "Patent"), with a filing date of July 27, 2018, a priority date of February 22, 2018, and a grant announcement date of March 1, 2019. On July 24, 2019, an outsider to the case, Bo [REDACTED] Company, filed a request for invalidation with the China National Intellectual Property Administration, claiming that the Patent did not comply with Article 23, Paragraph 2 of the Patent Law by relying on, as a prior design, "a live broadcast video of an NBA regular season game held on February 12, 2018, published on the official website of 'Tencent Video' (in which a scene was broadcast showing a staff member using a vibration massage gun to massage a player's knee)." On October 16, 2019, the China National Intellectual Property Administration served the relevant materials on Hai [REDACTED] Company. On November 18, Hai [REDACTED] Company submitted a statement of opinions. On May 19, 2020, the China National Intellectual Property Administration made an examination decision declaring the Patent wholly invalid. On July 10 of the same year, Hai [REDACTED] Company submitted to the China National Intellectual Property Administration a declaration requesting a grace period for non-loss of novelty. On November 2, the China National Intellectual Property Administration issued a special letter for examination business concerning the aforesaid request, refusing to accept Hai [REDACTED] Company's request. Hai [REDACTED] Company applied for administrative reconsideration. On April 1, 2021, the China National Intellectual Property Administration made a reconsideration decision, holding that Hai [REDACTED] Company's declaration requesting a grace period for non-loss of novelty had exceeded the two-month time limit, and that it was correct for the China National Intellectual Property Administration to issue the special letter for examination business deeming that no request for a grace period for non-loss of novelty had been made, thereby rejecting Hai [REDACTED] Company's request for reconsideration. Dissatisfied, Hai [REDACTED] Company filed the present lawsuit.

Upon trial, the Court of First Instance held that the time when Hai [REDACTED] Company filed the declaration requesting a grace period for non-loss of novelty had exceeded the two-month time limit prescribed in the Patent Examination Guidelines, and therefore rendered a judgment dismissing Hai [REDACTED] Company's claims. Dissatisfied with the first-instance judgment, Hai [REDACTED] Company filed an appeal.

The Supreme People's Court held in the second instance that the Patent Law as amended in 2008 and the Implementing Regulations of the Patent Law as revised in 2010 did not expressly prescribe the specific time limit for a patent applicant or patentee to file a declaration requesting a grace period for non-loss of novelty on the ground that another person had disclosed the contents of the invention-creation without its consent. Chapter 1, Part I of the Patent Examination Guidelines provides that where a patent applicant or patentee becomes aware, after the filing date of the patent application, that another person has disclosed the contents of the invention-creation without its consent, it shall file a declaration requesting a grace period for non-loss of novelty within two months after becoming aware of such circumstance. Where the aforesaid time limit is exceeded, the exception of non-loss of novelty under Article 24 of the Patent Law shall not apply. Hai [REDACTED] Company claimed that the aforesaid time-limit provision was set forth in the "preliminary examination" part of the Patent Examination Guidelines and did not apply to the examination procedure for a request for invalidation. In this regard, the judgment held as follows: First, the purpose of prescribing a two-month time limit for a patentee or patent applicant to file a declaration requesting a grace period for non-loss of novelty is to urge the patent applicant or patentee to timely perform the necessary declaration obligation, so as both to safeguard the lawful rights enjoyed by the patent applicant and patentee in respect of their invention-creation and to provide stable expectations for the public. The purpose of this institutional design should not vary depending on the different examination stages of the patent application or patent. Second, the provision in the Patent Examination Guidelines concerning the filing time limit only takes the filing date as the dividing line, and does not limit its application solely to the "preliminary examination" procedure for grant. If the patentee becomes aware, only after the patent is granted, that another person has disclosed the contents of the invention-creation without its consent, such circumstance also falls within the situation of "becoming aware after the filing date" as prescribed in that provision. Third, lack of novelty of an invention-creation for which a patent right has been granted constitutes a ground for a request for invalidation, while whether to accept a declaration requesting a grace period for non-loss of novelty is directly related to the determination of prior art or prior design and to the determination of whether the invention-creation involved possesses novelty. In the absence of contrary provisions in laws, regulations, and the Patent Examination Guidelines, where a declaration requesting a grace period for non-loss of novelty is filed in the examination procedure for a request for invalidation, reference should be made to the aforesaid provision in the Patent Examination Guidelines concerning the two-month time limit.

With respect to the determination of the starting point for filing the declaration, Hai [REDACTED] Company claimed that the time when it knew or should have known that another person had disclosed the contents of the Patent without its consent should be the date on which it received the invalidation decision, because before that date it had reasonable grounds to believe that the live broadcast video involved in this case had not resulted in disclosure of the Patent within the meaning of the Patent Law. The second-instance judgment held that "knew or should have known" refers to the subject's subjective awareness of the occurrence of an objective fact, rather than awareness of the legal consequences arising from that objective fact. The starting point of the time limit for a patent applicant or patentee to file a declaration requesting a grace period for non-loss of novelty shall be the time when it subjectively knew or should have known of the objective fact that another person had disclosed the contents of the invention-creation without its consent, rather than the time when it became aware that such objective fact had been determined by the patent administration department under the State Council or by a people's court as constituting disclosure within the meaning of the Patent Law. In this case, the China National Intellectual Property Administration forwarded the evidence at issue to Hai [REDACTED] Company on October 16, 2019, and Hai [REDACTED] Company submitted a statement of opinions to the China National Intellectual Property Administration on November 18 of the same year in response to the request for invalidation. It can thus be seen that, by November 18, 2019 at the latest, Hai [REDACTED] Company had clearly known that its massage gun product had been used in the venue of an NBA public game and had been broadcast live. Since Hai [REDACTED] Company claimed that the use involved in the NBA game venue constituted disclosure of the contents of the Patent by another person without its consent, and on that basis requested a grace period for non-loss of novelty, it should at least have filed the declaration within two months starting from November 18, 2019. Hai [REDACTED] Company filed the declaration requesting a grace period for non-loss of novelty in July 2020, which had exceeded the aforesaid time limit, and there was nothing improper in the China National Intellectual Property Administration's refusal to accept it. In conclusion, the second-instance judgment dismissed the appeal and upheld the original judgment.

This judgment clarifies the time limit for, and the starting point of, filing a declaration requesting a grace period for non-loss of novelty by a patent applicant or patentee on the ground that another person disclosed the contents of the invention-creation without consent. It provides rule-based guidance for patent applicants or patentees to timely and effectively safeguard through legal means the lawful rights they enjoy in their invention-creations, helps urge patent applicants or patentees to timely perform the necessary declaration obligation and avoid neglecting their rights, and also provides stable expectations for the public.