Grace Periods and Invention Disclosure

01.05.2012

An invention is not patentable if the claimed subject matter was disclosed before the date of filing or before the date of priority if a priority is claimed, of the patent application.

The novelty requirement can differ between countries. In most countries, public disclosure of the invention by any person, including the patent applicant, before the filing of a patent application destroys novelty and the ability to obtain a valid patent. These countries are said to operate an “absolute novelty” requirement. Examples of acts that can make an invention available to the public are written or electronic publications, sales, public oral disclosures and public demonstrations or use.

It is therefore very important to file your patent application before it is disclosed or published somewhere. But what if the invention has been published before you had an opportunity to file a patent application thereon? Is it in the public domain, or can the inventor still have one last chance to file for a patent?

In some countries, such as the United States, Canada, Australia and Japan, a grace period exists for protecting an inventor or successor in title from authorized or unauthorized disclosure of the invention before the filing date. That is, if the inventor or the successor in title publishes the invention, an application can still be validly filed which will be considered novel despite the publication, provided that the filing is made during the grace period following the publication. The grace period is usually 6 or 12 months.

Some absolute novelty countries provide a limited grace period for certain disclosures, which are limited to very limited circumstances. Examples of such circumstances include unauthorized disclosures by third parties who derive the invention from the applicant or presentations by the applicant before officially recognized academic societies. These limited grace periods typically provide for several months for the applicant to file a patent application, and require the applicant to inform the respective patent office about the earlier publication at the time of filing of the patent application.

 

Countries that have a twelve month grace period include, inter alia, the U.S., Canada, Mexico, Korea, Brazil, Australia, Argentina and the Ukraine.

 

Russia is an example of a country that has a six month grace period.

 

Countries that have a limited grace period (typically six month grace period) include, inter alia, Europe (includes Germany, France, U.K, Italy, Spain), China, Japan, Israel, Taiwan and India.

 

The above information should not be taken as legal advice. Please consult with your patent attorney before relying on the above information. Ehrlich & Fenster professionals will be pleased to discuss specific legal concerns you may have.

 

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