A Recent Judgment on the Exceptional Preservation of Novelty and Inventive Step by Taking Advantage of the Grace Period Provision

A patent application may be deemed to lack novelty or inventive step provided that the relevant prior art has been publicly disclosed before the filing date.  However, there is provided by the Patent Act a grace period (12 months for invention and utility model applications and 6 months for design applications) just in case the disclosure was published in any printed publication other than a patent publication, or the invention or design was disclosed out of or against the inventor’s intent.

In February 2024, the Intellectual Property and Commercial Court in Taiwan (hereinafter referred to as the Court) rendered a Judgment in an administrative litigation, which revoked a former decision made by the IP Office.

The case sheds light on how a patent applicant successfully demonstrated eligibility for the grace period provision.

The patent in question pertains to an automotive external lighting fixture. The applicant filed a utility model patent application with the IP Office on September 12, 2019. Following the grant and publication by the IP Office in January of 2020, a third party challenged the validity of the utility model patent with prior art references cited, by filing an invalidation action.  The primary prior art cited was a product page for a vehicle lighting fixture published on an online marketplace on July 8, 2019. The patent holder defended by submitting several declarations, arguing that it was they themselves who had authorized the online marketplace to sell the vehicle lighting fixture before filing the application, and therefore, the webpage disclosure was intentionally made by the patent holder within the grace period provided by the Patent Act.

However, the IP Office found inconsistencies between the names of the individuals and the company mentioned in the declarations and those associated with the webpage. Additionally, the dates on which the declarations were signed actually post-dated the grant of the utility model patent. Consequently, the IP Office deemed that the declarations failed to establish a connection between the webpage content and the patent holder, and therefore could not enjoy the benefit of the grace period provided by the Patent Act.  It concluded that the webpage constituted valid prior art, capable of defeating the inventive step of the challenged utility model patent.

Not being satisfied with the decision, the patent holder filed an appeal with the Board of Appeals, which, however, upheld the decision rendered by the IP Office. Subsequently, an administrative litigation was filed with the IPC Court.

The Court, upon reviewing supplementary evidence submitted by the patent holder during the administrative litigation, found that the operation of the online marketplace involved multiple individuals who were related and had divided responsibilities among themselves—some were responsible for establishing companies, while others managed the online marketplace. The Court acknowledged the declarations from these individuals, along with additional evidence such as backend management data of the marketplace and information regarding the supply connection for the vehicle light products submitted by the patent holder. As a result, the Court recognized that the webpage data met the requirements imposed of  the grace period, and therefore, it did not constitute a valid prior art that could negate the inventive step of the utility model patent.

Despite the fact that the declarations were signed after the patent was granted, the Court regarded them to be a post-facto confirmation that an authorization agreement had already been established between the patent holder and the marketplace. This Judgment underscores the Court's consideration of the factual relationships involved, thereby supporting the patent holder’s position regarding the applicability of the grace period provision.

The Court’s Judgment to overturn the Decision rendered by the IP Office in the substantive part of this case is chiefly due to its capability to conduct a more thorough investigation through preparatory procedures and oral arguments during the court hearings, in contrast to the IP Office, which primarily relies on written procedures. This allows the Court a broader eyesight to examine evidence and facts submitted by the patent holder thereby forming a more comprehensive Judgment.

It is not a prerequisite that the applicant make a statement regarding the disclosure for the grace period to be applied afterwards and besides, if evidence related to the grace period was not accepted by the IP Office during the filing or invalidation procedures, the patent holder should be aware of the opportunity to seek remedies through the court litigation process. This emphasizes the importance of comprehensive evidence preparation and the strategic use of judicial procedures to support claims related to the grace period and the novelty and inventive step of a patent in the face of prior art challenges.

The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.