October 22, 2017

International Grace Periods for Patents:
Be Careful When You Disclose Your Invention

Written by Ilene Goldberg

One of the most important rules of the patent system for inventors to remember is to refrain from publicizing your invention before you have an appropriate patent application filed. This is because no common, internationally-recognized exception to this rule exists. Every country requires an invention to be novel in order for it to be patentable. Novelty is defined by each country’s patent laws and essentially means that the invention is original.

The rule regarding novelty in the United States is codified in 35 USC Section 102. 35 U.S.C. §102 provides:

• (a) Novelty; Prior Art.—A person shall be entitled to a patent unless—
• (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
• (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

What happens then, if you’ve already disclosed the invention, can you still obtain patent protection? The answer depends on whether there is an applicable grace period in the jurisdiction in which you wish to file.

A “grace period” is the time before the date of filing a patent application during which certain kinds of disclosure of the invention would be deemed as not destroying the novelty of the invention. Disclosures of this nature are usually referred to as “non-prejudicial disclosures”. Each country has its own set of rules as to what kinds of disclosures do not destroy the novelty of the invention if they occur during the grace period.

The United States has codified its grace period in USC Section 102(b). This section provides for exceptions to § 102(a) for subject matter disclosed within one year or less before the application’s filing date. Pursuant to this Rule, the inventor’s own personal publications and disclosures made within one year of filing an application do not constitute prior art. Further, a third party’s disclosure of the subject matter within one year of the filing date of the application (“intervening disclosure”) is not prior art if the inventor had publicly disclosed the subject matter within the one-year grace period first. However, a disclosure by a third party before the inventor’s disclosure would not be considered an intervening disclosure and may be considered as prior art to which the grace period does not apply.

Other countries also have grace periods, but these periods and the conditions in which they apply are not the same in every country. For quick reference, I’ve listed countries which have similar grace periods. The first list is the countries and regional offices where disclosure is not to be taken into account in determining patentability if it occurred within 6 months before the filing date (priority date) by the inventor or his successor in title. In other words, this list includes countries with grace periods that cover any disclosures by the applicant or inventor. Refer to the International Grace Period Chart.

The next list includes the countries where the grace period of 6 months is limited to particular circumstances. Most of the countries on this list allow a 6 month grace period only where it occurred due to: 1. an evident abuse in relation to the applicant or his predecessor in title; or 2. display of the invention by the applicant or his predecessor in title at an official or officially recognized international exhibition.

There are three countries and one region where, no matter what type of disclosure there has been, no grace period provision exists. Thus, even if another person disclosed the invention without the inventor’s consent, no subsequent patent application could be filed in these countries.

However, all may not be lost because if an abstract or brief summary of an invention has already been published, it may still be possible to obtain a valid patent, even in countries where there is no grace period. For example, if the disclosure does not contain enough detail to enable a skilled person to carry out the invention, then the invention may still be considered new. Inventive step (obviousness) of the claimed invention compared with the earlier disclosure would also need to be assessed, and this would depend on how much information about the invention had been published.

Another approach for an inventor to consider if there has been a prior disclosure, is to register a design or file a utility model application for applicable inventions.

In Europe, for example, where there has been a prior disclosure and filing a patent application is not possible, a utility model application may still be possible. Utility models are patent-like rights that differ from patents mainly in that they are often not examined for novelty and inventive step (non-obviousness) on filing, they have a lower or non-existent inventive step requirement, and utility models have a shorter lifetime than a regular patent.  However, in some European countries, utility models are not obtainable for the same types of inventions as patents and process and method inventions are excluded in many jurisdictions. It is also important to note the grace periods for utility model applications differ for each country.