Why do Chinese companies always get stuck in the novelty test under Article 102 of the Patent Law when applying for patents in the United States? The judgment logic and response approach of USPTO examiners

The core reason why US patent applications are stuck under Article 102 of the Patent Law is often not that the technology is not new enough, but rather that Chinese applicants are accustomed to the "priority of application date" thinking, which does not match the comparison logic of US examiners who consider any global publication before the application date as existing technology. What's even more troublesome is that there are substantial differences in the definitions of "disclosure," "grace period," and "inventor" between China and the United States. Many operations that are fully compliant domestically become their own prior disclosures at USPTO. In 2026, USPTO's review of Article 102 will be tight or loose, especially in the fields of AI, new energy, and biomedicine. Reviewers will actively conduct full-text searches, including preprints of papers, exhibition materials, and e-commerce pages. To pass this level, it is necessary to pre-set the response path according to US rules from the writing stage.

What exactly is Article 102 blocking? It's not about whether anyone has done it, but whether it was made public before the application date

According to Section 102 of the United States Patent Law (35 USC § 102), if an invention has been publicly used, sold, or published in any patent document or printed publication worldwide prior to the filing date, or if there is a prior valid application by others, the applicant loses novelty. Note that the keywords here are "before application date" and "anywhere in the world". Article 22 of the Chinese Patent Law also discusses novelty, but the geographical restrictions and grace period rules for "public use" in China are different from those in the United States. Chinese applicants who participate in exhibitions, publish papers, and list their applications domestically before considering US patent applications are almost certain to trigger a public rejection of 102 (a) (1). The judgment logic of the examiner is very mechanized: as long as the publication before the application date is retrieved, the 102 rejection will be issued first, and then the applicant will provide evidence for exceptions. In practice, we generally suggest that the pace of product releases in the US market must be pushed back to the patent application timeline, and it is better to submit a temporary application first to occupy space.

Grace period is not a panacea: a one-year deadline and the boundary of 'inventor's own disclosure'

Many customers' first reaction when encountering a 102 rejection is' we are still within a one-year grace period '. There is indeed a grace period in the United States, as stipulated in 35 USC § 102 (b) (1), which states that disclosure by an inventor or a person who obtained information from the inventor within one year prior to the filing date does not constitute prior art. But this exception has three pitfalls. Firstly, the grace period only protects the disclosure of "inventors themselves". If the disclosure comes from partners, contract factories, or customers, and there is no confidentiality agreement, it may be deemed as third-party disclosure, and the grace period does not apply. Secondly, when a PCT application enters the United States, the grace period is calculated based on the international filing date, but the publication before the international filing date still depends on whether it is within one year. Thirdly, if the utility model or design disclosed by the Chinese applicant in China is retrieved by the examiner, it will also be compared. We generally advise clients to prepare an inventor's statement and public traceability evidence simultaneously when submitting a US patent application, rather than waiting for the examiner to reject before supplementing.

What does the 102 rejection by the examiner look like: understanding the differences between "A1", "A2", and "A3"

The 102 rejection issued by USPTO examiners is usually marked as 102 (a) (1), 102 (a) (2), or 102 (b). 102 (a) (1) refers to publications prior to the filing date, 102 (a) (2) refers to publications of US patents or US patent applications that have been published or authorized by others prior to the filing date, and 102 (b) is an exception to the grace period. Many Chinese applicants think that "102 (a) (2)" is their own problem when they see it, but in fact, this provision is aimed at someone else's prior application and may be overcome through "joint ownership" or "joint research and development agreement". When responding, it is necessary to distinguish item by item: if it is 102 (a) (1), it should be argued that disclosure does not belong to "printed publications" or "public use", or a grace period should be advocated; If it is 102 (a) (2), it is necessary to verify whether the other party's application truly constitutes a "prior valid application", whether it has been authorized, and whether it is the same inventor. In many of the cases we have handled, the rejection was due to the examiner treating the Chinese applicant's domestic application public text as a 102 (a) (2) comparison document. At this time, the examiner had to proactively submit the priority certificate and inventor consistency statement of the domestic application.

The response deadline is only 3 months, it can be extended but it will cost money

The response deadline for USPTO's rejection of 102 is usually 3 months from the date of publication and cannot be automatically extended. You can apply for an extension, but the fees will be charged in tiers: 1 month extension fee is currently about $200 (half for small entities), 2 months is about $560, and 3 months is about $1260. Many Chinese applicants habitually delay until the sixth month, only to receive a notice from the government. In practice, we generally recommend completing the evidence collection and response draft within 30 days after receiving the rejection, leaving time for translation and notarization. If an extension is indeed necessary, priority should be given to a one month extension instead of a three-month extension at once, as the examiner may issue a final rejection during this period, which will increase the difficulty and cost of the response. In addition, responses must be submitted using USPTO's EFS Web or Patent Center, and paper submissions are now generally not accepted.

Three high-frequency pitfalls for Chinese applicants: priority, inventor, and confidentiality review

The first pitfall is priority. Chinese applicants can claim priority within 12 months after filing domestically, but the 102 point comparison of US patent applications is based on the actual filing date or priority date. If the inventor and invention name in the priority document are inconsistent with the USPTO application, the examiner may not recognize the priority, resulting in a delay in the application date and an increased risk of disclosure. The second pitfall is the inventor. The United States requires inventors to be actual contributors, and the common handling of "nominal" or "service inventions" in China may lead to inventor disputes in the United States, thereby affecting the determination of "inventor's own disclosure" under Article 102. The third pitfall is confidentiality review. Article 19 of the Chinese Patent Law requires that inventions completed in China must undergo confidentiality examination by the patent administration department of the State Council before applying for a patent in a foreign country. Submitting a US patent application without confidentiality review may result in subsequent rejection of the Chinese application, and if discovered by the examiner in the US, it may also affect the integrity of the novelty judgment. We usually recommend that clients attach the confidentiality examination receipt as an attachment to their US patent application for reference.

The practical approach to the rejection of response 102: shifting from "argument" to "supplementing evidence+modifying claims"

Many Chinese applicants' first reaction is to write argumentative opinions, emphasizing differences in technology. But the 102 points are novelty, not creativity, and arguing that "technical effects are better" is basically useless. Effective responses usually take three paths. Article 1: Submit an affidavit or statement to prove that disclosure is an exception to the grace period, such as the inventor's own presentation at an academic conference, accompanied by the conference agenda, invitation letter, and photos of the presentation date. Article 2: Amend the claims by narrowing down the qualifying words such as "among which" and "characterized by" in the compared document, so that the claims have differences recognized by the examiner. Article 3: If the comparison document is applied for by someone else, attempt to exclude the application of 102 (a) (2) through "joint ownership" or "joint research and development agreement". Note that modifying the claims cannot introduce new matters, as there are clear limitations in 37 C.F.R. § 1.121. We generally recommend preparing two to three sets of claim gradients when submitting a US patent application to facilitate rapid contraction during response. For overseas intellectual property layout, reference can be made to our overall strategy for intellectual property business in the United States and the European Union.

Temporary application and PCT entry into the United States: How to choose between two timelines

Provisional Application is a unique placeholder tool in the United States, which must be converted into a formal application within 12 months after submission, otherwise it will become invalid. Temporary applications are not subject to review, but they can lock in the application date, which is very useful for the determination of "before the application date" under Article 102. If the Chinese applicant's product is about to be released or exhibited, priority should be given to submitting a temporary application, and a decision on whether to convert it to a formal application should be made within 12 months. The entry of PCT into the United States is another line: the international filing date of PCT is considered as the filing date in the United States, but when entering the national phase in the United States, it still needs to meet the requirements of 35 USC § 371, including submitting an English translation, IDS, and fees. Two lines can be combined: first apply for temporary space allocation, then PCT coverage overseas, and finally enter the United States. In practice, we generally recommend that product lines with a revenue share of over 20% in the US market directly apply for formal applications or PCT, rather than relying solely on provisional applications, as the scope of claims in provisional applications is narrow and the space for subsequent modifications is limited. For those involving multiple countries' layouts, reference can be made to the path design of intellectual property legal services in other countries.

USPTO Review Trends in 2026: AI Assisted Retrieval Makes 102 Rejections More Accurate

In 2026, USPTO will continue to promote AI assisted patent search, and examiners' ability to search non patent literature (NPL) will significantly improve, including arXiv preprints, GitHub code repositories, e-commerce product pages, and social media posts. This means that the lucky space for Chinese applicants to rely on "examiners unable to retrieve Chinese publications" in the past is narrowing. We have observed that the rejection rate for US patent applications involving AI algorithms, battery materials, and cross-border e-commerce products is higher than the average at 102. The way to deal with it is not to hide, but to conduct free implementation search (FTO) and patent search in advance, and organize the potentially cited publications into IDS to submit to USPTO. IDS is an information disclosure statement, and 37 C.F.R. § 1.56 requires applicants to proactively disclose known substantially relevant literature. Concealment may constitute unfair conduct, and the consequences are much more serious than 102 rejection. For those involving the dual layout of the United States and the European Union, reference can be madeUS and EU Intellectual Property PracticeCollaborative arrangements.

The foreign-related intellectual property team of Guangdong Zhiming Law Firm has been handling trademark, patent, and copyright applications and disputes in countries and regions such as the United States, the European Union, the United Kingdom, Japan, and South Korea for a long time. There is a mature process in the 102 responses to US patent applications, the conversion of temporary applications to formal ones, and the entry of PCT national phases. If you need to assess the novelty risk or response deadline of a specific case, you can call the hotline at 0755-25986969 to schedule a communication.

Disclaimer: The content of this article is based on the published US patent regulations and USPTO practices in 2026, and is for general information reference only. It does not constitute a legal opinion on any specific case. The US patent law and examination guidelines may be updated, and the outcome of each case depends on specific facts, evidence, and examiner discretion. Readers should not make application or response decisions solely based on this article. It is recommended to consult a licensed US patent lawyer or agent for specific technical solutions and disclosure timelines.