16 January 2012

‘Grace Periods’ – Consequences of Disclosure Before Filing

timeoutAs most readers will be aware, one of the cardinal rules of the patent system is that you should not tell anybody about your invention before you have an appropriate patent application filed.  An invention must be novel and involve an inventive step at the date of first filing.  These requirements are tested against the ‘prior art’, which is generally all information made available to the public, by anyone, at any earlier time.  There is no general, internationally-recognised, exception to this rule just because a prior disclosure has been made by an inventor or applicant.

However, there are a number of countries in which the patent law provides for a ‘grace period’.  For the purposes of this discussion, we define this term as follows:

grace period:- a period of time, prior to the filing of a patent application, during which any disclosures, intentional or unintentional, deriving from the inventor or a subsequent owner of the invention, are unconditionally excused from consideration as prior art against the application.

Our requirement that such disclosures be excused without condition (other than as to timing) is important.  We sometimes see discussions of ‘grace periods’ which include references to provisions relating to unauthorised disclosures, or disclosures at recognised ‘international exhibitions’ or before ‘learned societies’.  The laws of many countries – including many notoriously grace-period-free European nations – contain such provisions.  We do not consider that there is much ‘grace’ in provisions that apply only in narrowly restricted circumstances.

DURATION AND TIMING OF GRACE PERIODS

In all of the countries which we know to provide grace periods, the duration is either six or twelve months.

There are also two different approaches to calculating the timing of a grace period.  According to the first method, the grace period ends on the date of filing of a national application in the country in question (typically this requirement can also be met by filing an international application, if the country is a member of the Patent Cooperation Treaty).  Alternatively, and more generously, the grace period may end on the date of filing of the first application, in any country, from which priority can subsequently be claimed in a national application. 

We distinguish these two approaches as ‘national date’ and ‘priority date’ grace periods respectively.

COUNTRIES WITH GRACE PERIODS

It is surprisingly difficult to obtain a definitive list of all countries in which a grace period exists.  Short of trawling through the patent laws of every country on earth, we have compiled the following table based on a variety of sources and cross-checks.  We cannot guarantee that the list is complete, or totally correct.  If any reader is aware of any errors or omissions, please let us know either by email, or in the comments below.

Country
Duration (months)
Timing
Albania (AL)
12
Priority date
Armenia (AM)
12
Priority date
Argentina (AR)
12
Priority date
Australia (AU)
12
National date
Bulgaria (BG)
12
Priority date
Brazil (BR)
12
Priority date
Belarus (BY)
12
Priority date
Canada (CA)
12
National date
Germany (DE)
6*
Priority date
Ecuador (EC)
12
Priority date
Estonia (EE)
12
Priority date
Georgia (GE)
12
National date
Japan (JP)
6
National date
South Korea (KR)
12**
National date
Kazakhstan (KZ)
12
National date
Lithuania (LT)
6
National date
Moldova (MD)
12
Priority date
Macedonia (MD)
12
National date
Mexico (MX)
12
National date
Malaysia (MY)
12
National date
Peru (PE)
12
Priority date
Philippines (PH)
12
Priority date
Romania (RO)
12
Priority date
Russia (RU)
6
National date
Saudi Arabia (SA)
12
National date
Turkey (TR)
12
Priority date
Taiwan (TW)
6^
National date
Ukraine (UA)
12
Priority date
USA (US)
12
National date
Notes:

* Grace period in Germany applies only to utility models, not standard patents.
** Korea increased its grace period from 6 to 12 months, as of 1 January 2012.
^ Grace period in Taiwan presently limited to disclosures that are ‘not intended by the patent applicant’, which encompasses more than unauthorised disclosures, but is not wholly unconditional.  Amendments passed by the Legislative Yuan on 29 November 2011 will add disclosures in all ‘printed publications’, but are not yet in force at the time of writing.

TYPES OF GRACE PERIOD

We can distinguish three general ‘types’ of grace period:
  1. the current US approach, based on a ‘first-to-invent’ philosophy;
  2. the current approach in other countries which have a ‘first-to-file’ system; and
  3. the new US approach, based on ‘first-inventor-to-file’ under the America Invents Act, which will come into effect on 16 March 2013.
We emphasise that the following discussion focuses primarily on the impact of public disclosures by the inventor(s), or a subsequent owner of the invention.  In every country there exists a range of rules determining what does, and does not, count as ‘prior art’ to a patent application, and we make no attempt to provide an exhaustive survey of all these rules.  As always, we would recommend that readers seek professional advice in relevant jurisdictions, specific to their own circumstances.

CURRENT US ‘FIRST-TO-INVENT’ SYSTEM

As far as the operation of a ‘grace period’ is concerned, the existing US ‘first-to-invent’ system is the simplest.  Any disclosure which takes place within the 12 months prior to the filing of a US patent application – whether by the inventor, or by another – is excluded from consideration as prior art, so long as the patent applicant is able to demonstrate an earlier date of invention.

Since an inventor clearly cannot self-disclose an invention that has not yet been made, a 12-month period of grace covering all disclosure by, or originating with, the inventor is inherent in this approach.

This approach is illustrated by the flow chart below, which can be used to determine whether a particular item of input ‘prior art’ is available, or unavailable (i.e. covered by the grace period), as prior art against the claims of a patent or application.

First-to-invent

TYPICAL ‘FIRST-TO-FILE’ SYSTEM

In a typical system which combines a grace period with ‘first-to-file’ application priority – such as in Australia, Canada, and others – only disclosures by the inventor, or a subsequent owner (e.g. assignee) of the invention, have the benefit of the grace period.  Generally this also includes indirect disclosures, such as where the inventor discloses the invention to a third party, who subsequently makes a separate public disclosure.

Unrelated disclosures, such as might be made by an independent inventor who happens to come up with the same, or similar, invention remain available as prior art against a patent application.

This approach is illustrated by the following flow chart, which can again be used to determine whether a particular item of input ‘prior art’ is available, or unavailable, as prior art against the claims of a patent or application.

First-to-file

The above chart assumes a 12-month grace period.  In countries with a six-month grace period, the initial publication date test is modified accordingly.

NEW US ‘FIRST-INVENTOR-TO-FILE’ SYSTEM

When the ‘first-inventor-to-file’ provisions of the America Invents Act come into effect in the US on 16 March 2013, a more complex grace period regime will commence.

The new US approach will potentially open up an application to more prior art than is currently the case – in many instances, independent disclosures made by others during the 12-month period prior to filing on an application will become available as prior art, regardless of the applicant’s date of invention.

However, in certain circumstances, the new scheme will exclude disclosures that might be prior art in other jurisdictions which otherwise have similar grace period provisions.

In particular, if a third party disclosure is identified prior to the filing date of an application, then it will generally be available as prior art unless the applicant is able to show an earlier disclosure date.  The patent applicant in such a case must still be the first-to-file in order to obtain a patent for the invention.  But unlike other jurisdictions, the first inventor to publish will acquire a defensive right against later publications, whether or not they are derived from the inventor’s publication.

This approach is illustrated by the following flow chart, which can again be used to determine whether a particular item of input ‘prior art’ is available, or unavailable, as prior art against the claims of a patent or application.

First-inventor-to-file

FURTHER CONSEQUENCES OF RELYING ON GRACE PERIODS

In most jurisdictions – other than under the current US ‘first-to-invent’ regime – it is unwise to rely intentionally upon the use of any grace period that may be available.  A grace period may ‘save’ an inventor who makes a careless or naive disclosure of an invention, prior to considering the filing of a patent application.  However, there are a number of reasons why it is still always better to file before going public, if possible.

Firstly, as the table above shows, there a many significant jurisdictions – including western Europe generally – in which there is no period of grace.  Since these are generally ‘global novelty’ regimes, any publication or other disclosure anywhere in the world will invalidate a subsequent patent application.

Secondly, the time periods and filing requirements vary amongst the different countries in which grace periods are available.  This makes it difficult to keep track of the deadlines for filing various applications, if the applicant is interested in pursuing patent protection in multiple countries.

Thirdly, relying on a grace period results, in many jurisdictions, in a potential reduction in the available rights.  In Australia, for example, there are ‘prior user’ provisions which mean that if a third party learns of an invention, and commences exploiting the invention themselves during a period prior to the filing of an application, that third party acquires a right to continue exploiting the invention even after a patent application is filed, and a patent ultimately granted.  Similar prior user, or ‘intervening’ rights, and defences to infringement, exist in other jurisdictions also.

Even in the US, under the ‘first-to-invent’ regime, it may commonly be preferable to file an application and secure a filing date sooner rather than later.  While the first inventor is generally entitled to receive a patent, even if filing is delayed (though not unreasonably so), very few inventors outside major industrial or academic research labs consistently maintain records of work that are sufficient to meet the high standards required by the courts to prove a date of invention.  Filing as early as possible is the best defence against requiring such evidence.

In some countries there are additional requirements for applicants relying on grace periods.  For example, the applicant may be required to declare any prior disclosures at the time of filing in order to obtain the benefit of a grace period (Japan in one country which has such a requirement).  An applicant should therefore always seek the advice of a local patent professional before relying on a grace period.

CONCLUSION

While a number of countries provide grace periods of at least six months, most do not.  There are significant markets represented in both camps.

For inventors and applicants whose commercial interests extend beyond those few countries in which grace periods exist, it is imperative that no public disclosures are made prior to filing of at least one initial patent application, from which others can subsequently claim priority.

In the fast-paced markets of the post-industrial, digital, world, it is becoming increasingly difficult to avoid any form of public disclosure prior to establishing a patent position.  It would be highly desirable for all of the world’s major nations to agree on global reciprocal grace period provisions.  And while such an agreement seems a little more likely now that the US has finally relented, and is moving to a ‘first-to-file’ priority regime, there is no clear sign that an international standard grace period is high on anybody’s agenda at present.

In the meantime, inventors and applicants would be wise to heed the conservative advice provided by most attorneys – keep quiet until you have a patent application filed!

3 comments:

Michelle said...

 Add an omission to the list mentioned:China (CN)  Duration:6 months, timing: priority date

Jim Donaught said...

I have a list compiled from various sources, showing Colombia with a 12-month period that excuses only the applicant's publications from the prior art.

And yes, it's a huge pain to compile and maintain a list like this!  Thanks for putting in the effort.

Patentology (Mark Summerfield) said...

Thanks for your contribution, Jim.

I have received input from various sources, and as soon as I get the time to corroborate a few of them I intend to update this post.  I will be sure to include Colombia when I do!

Mark

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