19 August 2010

A Note on the Limitations of the Australian "Grace Period"

We read a comment on another blog today that reminded us of common misconceptions about the Australian "grace period", held particularly by people more familiar with the US system.

This seemed like a good prompt for a quick review of the issues to watch out for.

As most readers will be aware, the "grace period" is a one-year period prior to the filing of a patent application, during which any public disclosure or use of an invention by the inventor(s) or applicant(s) will not be regarded as prior art citable against the application.

To put it the other way around, if you disclose your invention, you have a maximum of 12 months within which to file a patent application, otherwise your own disclosure will invalidate the application.

Most countries do not have a general period of grace, with the US, Canada and Australia being notable amongst the exceptions.  However, the Australian grace period should not be routinely relied upon, due to a number of limitations compared to the US system.


Compared to the US grace period, the Australian equivalent has a number of limiting differences of which applicants should be aware.  The reason for this can be understood by comparing the different philosophies behind each approach. 

The US provisions are based upon a principle that a person who wants a patent must be relatively diligent in proceeding to the Patent Office with their request.  Thus a number of "triggers" (including disclosure) initiate a 12-month window within which an application must be filed.

The principles behind providing a grace period in Australia are somewhat different.  It is primarily there as a "safety net" for applicants who, through inexperience, ignorance or accident, disclose their inventions before filing a patent application.  A secondary consideration is the desirability of having a similar provision to the US, which is one of Australia's major trading partners.

The significant limitations of the Australian grace period compared to the US are listed below.
  1. The grace period applies only to the filing of a complete (ie nonprovisional) application.  Thus it is not possible in Australia (as it is in the US) to disclose an invention, file a provisional application one year later, and then file a nonprovisional application a further year on, claiming the benefit of the provisional application date.  The nonprovisional application will be invalid in this case, because the relevant grace period commences on the same day as the provisional filing.
  2. As a corollary of the above, the Australian grace period does not afford an inventor or applicant any additional time to file a nonprovisional application.  Considering the further limitations below, it is therefore always preferable to file a provisional application and secure a priority date before disclosure occurs.
  3. The same applies to priority claims based on foreign filings.  Furthermore, Australia is an "absolute novelty" jurisdiction, ie disclosure or public use anywhere in the world constitute admissible prior art.  Thus, for example, if an invention is disclosed in the US, and a patent application subsequently filed at the USPTO (within the US grace period), any Australian application must also be filed within the same period.  A later Australian application claiming priority from the initial US filing will not be valid.
  4. The applicant's rights during the grace period are not preserved absolutely.  In particular, if a third party learns of an invention as a result of the applicant's disclosure, and as a result commences some activity that would constitute an infringement of the applicant's claims, then the third party has a right to continue that activity if the applicant subsequently files an application (within the grace period) and obtains a granted patent.  In other words, third parties may acquire limited "intervening rights" as a result of an applicant's disclosure.
  5. The grace period applies only to public disclosures.  It does not apply to so-called "secret use".  A commercial use of an invention, that nonetheless does not result in public disclosure, will invalidate any subsequently filed application.  There is no equivalent in Australia to the "on sale" bar in the US, which would cover this situation, with or without associated public disclosure.
We would generally not encourage the intentional use of the grace period in Australia.  It is a useful saving provision when a disclosure has occurred prior to filing a patent application, but is no substitute for securing a priority date before any disclosure has occurred.


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