Stay of Execution – Can I still have a Patent for my Invention after disclosing it?
Co-authored by: Dr. Bakuri Lanchava and Lai Ye Siang
Here we want to highlight the importance of the so called “grace period”, which is provided for in some jurisdictions.
The question we often face is whether a grace period for the filing of patent applications is available, after an inventor has voluntarily or inadvertently disclosed a subject matter of his invention to the public. This is in juxtaposition to situations where the subject matter was disclosed to the public, without the inventor’s consent.
In very short words, the disclosure of a subject matter of an invention before the filing of a patent application generally destroys the novelty of the invention, thereby providing grounds for the refusal of grant of the patent application. In other words, disclosure of an invention prior to filing a patent application kills the invention.
The exception to this general rule is if the patent application was filed within a statutory grace period. The earlier disclosure will not be considered in examining such a patent application, in particular for novelty.
Due to the differences in the patent laws of each jurisdiction, the answer to the above question is not always the same. We encourage you respond to our “call to action” in point 5 in order to share your knowledge with all other readers.
1. What is a grace period?
As a starting point for discussion, one of the criteria for patentable subject matter is that it must be new or novel. This means that a subject matter of a patent application must not be publicly disclosed prior to the filing of the patent application, in order to qualify for patent protection.
However, not all patent applicants are aware of this novelty requirement. As a result, many patent applicants inadvertently publicly disclose their inventions before filing patent applications to protect their inventions. Consequently, the earlier disclosure destroys the novelty of the patent application, and the patent applicants are deprived of their right to patent protection.
In recognition of the fact that many patent applicants are not aware of the novelty requirement and to mitigate the devastating effects of inadvertently disclosing the subject matter of a patentable invention prior to the filing of a patent application, the patent laws of some jurisdictions provide for a “grace period”.
In general, the “grace period” is calculated starting from the date of earliest disclosure. The length of the “grace period”, if available, varies according to the patent laws of each jurisdiction.
When a patent application is filed within the “grace period”, the early disclosures, made from the date of earliest disclosure until the filing of the patent application, are not taken into account by the relevant patent office when determining the novelty of the patent application.
2. What can I salvage using the grace period?
The availability of grace periods mean that patent protection may still be sought by an inventor as long as his patent application is filed within the grace period as provided by the patent laws of the relevant jurisdiction.
However, while the inventor may yet obtain patent protection, it should be kept in mind that the protection he can get is far from comprehensive. This is because patent rights are territorial in nature, and therefore can only be enforced in the jurisdictions where the patent rights are granted.
As at the time of writing, the number of jurisdictions that provide for a grace period is very limited (and, for instance, does not include Singapore, although there are proposed amendments to the Singapore Patents Act to provide for some form of grace period). The inventor can only seek patent protection in these jurisdictions, and has forever lost his right to pursue patent protection in other jurisdictions, which do not provide for grace periods.
3. What are the considerations in determining whether the grace period applies?
Whether a prior disclosure of an invention made by an applicant is prejudicial to the novelty for his later patent application for the same invention or can be disregarded for patentability by virtue of a grace period can be very different for different jurisdictions. This is because the relevant law can vary significantly from country to country, and the implications of these laws are also subject to constant change.
Beyond the threshold issue of whether a grace period is statutorily provided by the patent laws of a particular jurisdiction, there are three important issues that need to be addressed in determining whether a filed patent application can enjoy the grace period.
Firstly, are priority dates relevant to the calculation of the grace period? Secondly, does the nature of the prior disclosure affect the operation of the grace period? Lastly, does the grace period apply to utility models applications, where available?
3.1 Calculation of grace period – relevance of priority date
Generally, the calculation of the grace period starts from the date of earliest disclosure and ends six or twelve months (depending on the jurisdiction) from that date. But what happens if your patent application claims a priority date within the grace period, but is filed with the relevant patent office after the grace period has passed? Can you rely on the priority date to enjoy the effect of the grace period?
In our search for an answer, we turn to Article 4 of the Paris Convention (to which Article 8 of the PCT also refers) for guidance on the effects of claiming priority. Article 4 provides that –
B. Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union (emphasis added in italics )
Put simply, Article 4 tells us that the effect of claiming the priority of an earlier patent application is that the patent application shall not be invalidated by reason of any acts accomplished in the interval. Perhaps more importantly, it also tells us that rights acquired by third parties before the priority date are governed by domestic legislation.
The clarity of the domestic legislation in which grace periods are available can vary greatly.
For illustrative purposes, a plain reading of section 3(1) of the German Utility Model Act informs us that the priority date is relevant in determining whether the application falls within the grace period (see s 3(1), “…Description or use within the six months preceding the date relevant for the priority of the application shall not be taken into consideration…”). This interpretation has also been confirmed in German case law.
In contrast to the German Utility Model Act, section 14(3)(a) of the Malaysian Patents Act(which provides for a grace period of 1 year for disclosure) is worded as follows: “… such disclosure occurred within one year preceding the date of the patent application…”. On its face, it is unclear whether the date referred to is the filing date or priority date.
We believe that the priority date is the relevant date for the calculation of the grace period. This is because section 27A of the Malaysian Patents Act tells us that the priority date is the filing date of the application.
Nonetheless, our Malaysian Associates have cautioned us about the relying on the priority date to claim the effects of the grace period, because ambiguities in Malaysian patent laws may present an opportunity for interested parties to challenge the validity of any granted intellectual property right at a later date.
3.2 Nature of disclosure
The nature of disclosure can take many different forms. For example, a disclosure can be an exchange of technical documents between an inventor and a third party, or a sale of a device that includes the invention. Does the nature of disclosure affect the operation of the grace period? Again, this depends on the patent laws of the relevant jurisdiction.
As an example, section 24 of the Australian Patents Act tells us that in determining whether an invention is novel or inventive, an Examiner must disregard “any information made publicly available in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee”. The prescribed circumstances are found in Chapters 2.2 to 2.2D of the Australian Patents Regulations, which includes “… circumstances other than the circumstances described in regulations 2.2, 2.2A and 2.2B …”
On its face, the scope of the provisions governing grace periods is extensive, and we believe that the nature of the disclosure does not affect the operation of the grace period. In other words, the grace period is available regardless of the circumstances that led to the own disclosure.
However, our Australian Associates warned us that the exact scope of these provisions have not been judicially determined. Thus some disclosures, e.g. sales of the invention products and disclosures that arise from commercial use or dealings with the invention, may not be covered by the grace period.
3.3 Grace periods for utility models
Is the grace period available for utility models? The answer is yes, as can be seen from our discussion above of the German Utility Model Act. This is because in its basic definition, which may vary from one country (where such protection is available) to another, a utility model is similar to a patent.
One interesting observation is that while a grace period for disclosures is available for German utility model applications, German standard patent applications do not enjoy such a grace period.
4. What do you do with this information?
Unfortunately, grace periods for own disclosures are not available in Singapore at the moment.
That said, if you have an invention that you have disclosed, it may not too late to salvage some IP rights by filing your patent or utility model application in the jurisdictions that provide for grace periods.
We believe that the priority date is the relevant date in determining whether a patent or utility model application falls within the grace period. However, to avoid possible issues with some jurisdictions, you should file your patent or utility model application as soon as possible, and seek to rely on the actual filing date to claim the grace period.
To assist you, we have compiled the information below, which gives a overview on the availability of grace periods in some jurisdictions.
4.1 Availability of, length of and comments on Grace periods in some jurisdictions
Australia: Yes; 12 months from date of first disclosure; The scope of the provision providing for the grace period has not yet been judicially determined. Thus, it is possible that some disclosures, e.g. sales of the invention products and disclosures that arise from commercial use or dealings with the invention, may not be covered by the grace period.
Germany: Yes for utility model; 6 months from date of first disclosure; German patent law does not provide grace period for standard patent applications. However, a grace period is available for German utility model applications. An applicant can rely on a priority claimed in the utility model application to enjoy the grace period.
Gulf Corporation Council: No
Malaysia: Yes; 12 months from date of first disclosure; Malaysian patent law is unclear as to whether the priority date or the actual filing date of a Malaysian patent application is the relevant date for the calculation of the grace period.
To overcome this ambiguity in Malaysian patent law, our inventor should file his Malaysian patent application within 12 months of the date of first disclosure, in order to deny third parties an opportunity to challenge the validity of the Malaysian patent application in the future.
If our inventor is unable to file his Malaysian patent application within the suggested time, he can still rely on the priority date of the Malaysian patent application (if the priority date is within the grace period) and deal with any issues as they arise.
Korea: Yes; 12 months from date of first disclosure; A Korean patent application will enjoy the effect of the grace period as long as it claims the grace period of novelty, and has a filing/priority date falling within the grace period.
Saudi Arabia: No
Proposed changes to Singapore patent law being discussed at the time of writing include the provision of a grace period for voluntary disclosures of the invention by the inventor, or by a person who obtained the matter disclosed directly or indirectly from the inventor.
USA: Yes; 12 months from date of first disclosure; The relevant date for calculation of the grace period is the “effective filing date”, which is defined as the earliest priority date claimed, or the actual filing date (if no priority is claimed).
Update on 31 May 2017
Japan: Yes; 6 months from date of first disclosure; grace period can also be claimed for the Japanese national phase entry of a PCT application (as long as this Japanese national phase application is filed within 30 months and 30 days from priority date).
5. Call to action
As shown above, the domestic legislation governing grace periods vary greatly. In order to get a more complete picture of the availability of grace periods, we must look at the patent laws of each specific jurisdiction.
Thus, we would like to appeal to our fellow colleagues. Please help us to form a more complete picture by posting a comment to answer (with reference to the jurisdictions that you practice in) the following questions:
- Do you have a grace period for patent or utility model applications? If yes,
- What is the date relevant for determining whether the application is made within the grace period? The date of actual filing or the priority date?
This article has been first published here