Wu Fang
The New Implementation Rules of the Patent Law (hereinafter referred to as the “New Rules”) were promulgated on December 21, 2023, and will take effect on January 20, 2024. When the Patent Law was amended for the fourth time in 2020, the provision that "it is disclosed to the public for the first time in the public interest, when a state of emergency or any extraordinary circumstance occurs in the country" was listed as one of the exceptions to lack of novelty of an invention creation. Article 33 of the New Rules further improves the relevant provisions of the exception to lack of novelty based on the provisions of Article 24 of the Patent Law, and the main contents of the amendment of Article 33 of the New Rules are explained as follows.
1. The first disclosure of the invention at a conference convened by an international organization would be likely to fall within the exception to lack of novelty.
Article 33 of the New Rules expands the scope of the prescribed academic or technical conference as defined in Article 24(3) the Patent Law by adding "academic or technical conference convened by an international organization which is recognized by the competent department of the State Council". The original provision limits "academic or technical conference" to those organized by the relevant competent department of the State Council or a national academic organization, i.e., the conference is limited to be held in China and is convened by an organization in China. After the New Rules take effect, the first disclosure of an invention at a conference convened by an international organization would be likely to fall into the exception to lack of novelty.
From the literal meaning of "academic or technical conference convened by an international organization which is recognized by the competent department of the State Council", there is no restriction on the venue of the conference. The newly amended Guidelines for Patent Examination (2023) (effective January 20, 2024) do not further specify which conferences fall into the scope of "academic or technical conference convened by an international organization which is recognized by the competent department of the State Council". In this regard, the China National Intellectual Property Administration shall provide further explanations on "recognized by the competent department of the State Council" and "international organization", in order to effectively implement this amendment.
2. The New Rules have deleted the provisions on who should issue the certifying documents, and the relevant provisions should be applied to the Guidelines for Patent Examination formulated by the China National Intellectual Property Administration, and the requirements for the certifying documents are basically the same as before, with slight changes.
As to whether the first exhibition or first publication of an invention creation at an "international exhibition" or "conference" as provided in Article 24 of the Patent Law is an exception to lack of novelty, Article 33 of the New Rules no longer provides that the certifying documents shall be issued by the organizer of the exhibition or the department or organization convening the conference.
The requirements for certifying documents in the newly amended Guidelines for Patent Examination (2023) are basically the same as the previous requirements, with slight changes. According to the provisions of 6.3.2 and 6.3.3 in Chapter 1 of Part I of the Guidelines for Patent Examination (2023), "The certifying documents of an international exhibition shall be issued by the organizer of the exhibition or the organizing committee of the exhibition. The certifying documents shall indicate the date and place of the exhibition, the name of the exhibition, and the date, form and content of the invention exhibited, and shall be stamped with the official seal", and "The certifying documents of the academic and technical conferences shall be issued by the relevant competent departments of the State Council or the national academic organizations convening the conference. The certifying documents shall indicate the date and place of the conference, the name of the conference, and the date, form and content of the publication of the invention creation, and shall be stamped with the official seal." Compared with the previous provisions, it has been added that the certifying documents of international exhibitions may be issued by the organizing committee of the exhibition.
However, the newly amended Guidelines for Patent Examination (2023) do not provide for the specific requirements for the materials required in the case of "academic or technical conferences convened by international organizations recognized by the competent department of the State Council", pending further clarification by the China National Intellectual Property Administration.
3. Certifying documents required to be submitted in the case of "it is disclosed to the public for the first time in the public interest, when a state of emergency or any extraordinary circumstance occurs in the country"
As mentioned above, " it is disclosed to the public for the first time in the public interest, when a state of emergency or any extraordinary circumstance occurs in the country " was listed as one of the exceptions to lack of novelty of the invention creation, and the New Rules further clarified that in this case, "the patent administrative department under the State Council may, when considered necessary, require the applicant to submit a certifying document within a specified time limit".
The requirement for certifying documents is further clarified in the newly amended Guidelines for Patent Examination (2023), "The certifying documents shall be issued by the relevant department of the people's government at or above the provincial level. The certifying documents shall state the reason and date of disclosure for the purpose of public interest, as well as the date, form and content of the disclosure of the invention creation, and shall be stamped with an official seal."
Closing Remarks
The New Rules will take effect on January 20, 2024, and the New Rules have further refined and improved the relevant provisions on the exception to lack of novelty of invention creation. It is possible that the first disclosure of an invention creation at a conference convened by an international organization fall into the exception to lack of novelty, and the requirements for the applicant of an invention creation to provide certifying documents for the exception to lack of novelty were changed in the New Rules. However, in combination with the relevant provisions of the newly amended Guidelines for Patent Examination (2023), the requirements for certifying documents are basically the same as before, with slight changes.
After the amendment of the New Rules, whether the first disclosure of an invention at a conference convened by an international organization is an exception to lack of novelty and the requirement of the relevant certifying documents are subject to further explanation by the China National Intellectual Property Administration.
Wu Fang
Fang WU joined NTD in 2013 and focuses on providing legal services in the field of intellectual property, especially patent, including patent investigation, consultation, various patent analysis, patent invalidation, patent administrative litigation, patent infringement litigation.
Fang WU has education background in chemistry and legal and is good at handling complicated patent infringement cases in the chemical industry. She is familiar with investigation and evidence collection, sample testing, and intellectual property judicial appraisal.
