Notable issues regarding Taiwan and China’s grace period of patent applications

(Image source: Thomas | CC BY 2.0)  

Taiwan and China do have grace period of SIX months which is shorter than that in USA (AIA 35 U.S.C. 102(b)(1)(A)). Besides, we strongly recommend not using it, especially in China.

Taiwan Practices:

Regarding Taiwan, Article 22.3 of Taiwan Patent Act stipulates FOUR exceptions:

1. the invention concerned was publicly disclosed as a result of conducting a test;

2. the invention was disclosed in a printed publication;

3. the invention was displayed at an exhibition held or recognized by the Government; and

4. the invention was disclosed without the consent of the applicant.

The first three exceptional disclosures should be made directly or indirectly by the applicant. In addition, to gain the benefit of the grace period, the applicant shall state the fact (the disclosures) and the relevant date in the patent application at the time of filing and provide document(s) of proof within the time period specified by the Specific Patent Agency in accordance with Article 22.4. Notably, the SIX months is calculated from the disclosure date to Taiwan filing date, but not the earliest priority filing date.

China Practices:

Regarding China, Article 24 of China Patent Act stipulates THREE exceptions:

(1) the invention was first exhibited at an international exhibition sponsored or recognized by the Chinese Government;

(2) the invention was first made public at a prescribed academic or technological meeting; and

(3) the invention was disclosed by any person without the consent of the applicant.

The first two exceptional disclosures should be made directly or indirectly by the applicant. In addition, to gain the benefit of the grace period, the applicant shall state the fact (the disclosures) and the relevant date in the patent application at the time of filing.

Notably in the China grace period exceptions, the international exhibitions which are not held in China are incompliant with the first disclosure exception and there is no prescribed foreign academic or technological meeting. Accordingly, most foreign applicants could not gain the benefit of the grace period.