May the Grace Period Be Invoked With Respect To a Design Disclosed by a Third Party?

01/30/2026

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To promote circulation of technology and balance the protection of patent applicants’ rights, Paragraph 3, Article 22, Article 120, and Paragraph 3, Article 122 of Taiwan Patent Act[1] provide for a “grace period” in the application of invention, utility model, and design patents. Accordingly, if an applicant files for an invention or utility model patent within 12 months or for a design patent within 6 months after “a disclosure made by or against the applicant’s will,” the disclosure will not affect the determination of novelty or inventive step/creativity of the application. 

 

Regarding the persons whose acts may apply to the grace period, in addition to the “applicant,” Articles 15, 45, and 48 of the Enforcement Rules of the Patent Act provide that a person who has obtained the right to apply for patent due to inheritance, assignment, employment or capital contribution is also entitled to claim the grace period with respect to disclosures made by their decedent, assignor, employee or commissioned person prior to the filing.  Furthermore, the Invention Patent Examination Guidelines state: “For disclosures that, by way of exception, do not result in loss of novelty or inventive step, the actor must be either the applicant or a third party.  The term ‘applicant’ also includes the applicant’s predecessor in title.  The term ‘applicant’s predecessor in title’ refers to the decedent or assignor of the right to apply for a patent, or the employee or commissioned person of the holder of such right.  The term ‘third party’ refers to persons other than the applicant who disclose the technical content of the applicant (such as those appointed, authorized, or instructed by the applicant) who breach confidentiality obligations, or who obtain the invention through unlawful coercion, fraud, or theft.”  The Design Patent Examination Guidelines contain similar provisions.  Accordingly, if a third party discloses the applicant’s invention or design with the applicant’s consent, or by leak through unlawful means, the grace period may also apply.  However, if the third party discloses an invention or design that they independently developed, it remains unclear how such a circumstance should be handled. 

 

With respect to design patents, on 17 December 2025, the Intellectual Property and Commercial Court (the “IPCC”) recently rendered the 2025 Min-Zhuan-Su-Zi No. 19 Judgment, which appears to hold that the grace period does not apply in such circumstances.  The reasoning may be summarized as follows:

1.        It is not the case that invoking the novelty grace period automatically guarantees protection of novelty.  Even where the grace period applies, if during that period a third party discloses or files an application for the same design, the design would still lose novelty or creativity as a result of such disclosure, since the grace period cannot exclude the fact of the third party’s prior application.

2.       If the sale date of the disputed product falls within the grace period (in this case, from 1 September 2023 to 1 March 2024), then because of the disclosure by a third party during that period, the plaintiff’s disputed patent would lose novelty or creativity and thus be invalid. However, if the sale date is after the filing date of the disputed patent, the defendant’s conduct would constitute infringement. 

 

In addition, with respect to invention patents, there have previously been judgments adopting a similar view.  For example, the 2024 Min-Zhuan-Su-Zi No. 24 Judgment (decision date: 12 December 2024) rendered by the IPCC stated: 

“The defendant does not fall within the category of the aforementioned ‘third party’; that is, the defendant is not a person who acted without the plaintiff’s commission, authorization, or instruction and breached confidentiality obligations or obtained the invention through unlawful coercion, fraud, or theft.  The disputed product purchased by the defendant may have been independently invented by another party, … The actor of the disclosure was another person, and thus such disclosure constituted a disclosure of independent invention of another.  In principle, it is presumed that the exceptional grace period does not apply to such an invention with respect to the loss of novelty or inventive step.  The technical content of such disclosure constitutes prior art for determining whether the invention claimed in the patent application possesses novelty or an inventive step. Therefore, the plaintiff’s assertion that the grace period applies is unfounded.”