Patent Grace Periods Around the World
Ordinarily, a public disclosure of an invention prior to a patent application being filed would count against the patent application because the prior disclosure would mean the invention is not novel at the time of filing. Some jurisdictions, however, implement a “grace period” which is a period of time, before a patent application for an invention is filed, in which the invention could be publically disclosed by the applicant without its novelty being lost.
The grace period provisions differ across jurisdictions, but, generally, the grace period allows 6 or 12 months for filing a patent application after a disclosure. Disclosures to which the grace period applies are not taken into account as prior art when assessing novelty and inventive step. In most countries, grace periods only apply to disclosures by the inventors or the person who is entitled to apply for the patent, not to independent disclosures by third parties.
Below is a non-exhaustive list of jurisdictions that operate with a 12- or 6-month grace period [1].
Jurisdictions that operate a 12 month grace period
● Argentina (AR)
● Australia (AU)
● Barbados (BB)
● Brazil (BR)
● Canada (CA)
● Columbia (CO)
● Costa Rica (CR)
● Dominican Republic (DO)
● Ecuador (EC)
● Estonia (EE)
● Malaysia (MY)
● Malta (MT)
● Mexico (MX)
● Peru (PE)
● Philippines (PH)
● Sri Lanka (LK)
● Turkey (TR)
● Ukraine (UA)
● United States of America (US)
Jurisdictions that operate a 6 month grace period
● Albania (AL)
● Chile (CL)
● Eurasia (EA)
● Japan (JP)
● Russian Federation (RU)
● South Korea (KR)
● Uzbekistan (UZ)
The US grace period
Under the new “first inventor to file” system, the following disclosures would not be considered to be prior art if made within a 12 month period before the effective filing date or priority date:
(a) Disclosures by inventors;
(b) Disclosures by someone who obtained the disclosed subject matter directly or indirectly from the inventor; and
(c) Disclosures by a third party within the same 12 month period if disclosures by (a) or (b) for the same subject-matter has already occurred.
The US grace period is calculated 12 months before the effective priority date, which may be a US or foreign priority date. This would, for example, allow an inventor, who has disclosed his or her invention, to file a UK patent application (which can be filed without paying any official fees) within a year of the disclosure and then, within a year of filing the UK application, file a US application claiming priority from the UK application. Thus, effectively, the filing of a US application (and its associated costs) could be deferred by 2 years from the disclosure. The disclosure by the inventor would, however, count against the UK application as the UK does not have a similar grace period.
The UK grace period
Currently, the UK system does not operate with the grace period described above. However, the UK (and Europe) does provide a grace period of 6 months in certain very limited circumstances. If the disclosure was due to or a consequence of i) an evident abuse in relation to the applicant (e.g. a breach of confidence), or ii) a display of the invention at an officially recognized international exhibition, then that disclosure will not count against the application if the application is filed within 6 months of the disclosure. Any other disclosure (such as disclosures a)-c) above) would count against the application.
Last year the UK IPO launched a consultation [2] seeking industry views on harmonising the grace period for patent applications with other jurisdictions.
Respondents to the IPO's consultation, which included the Chartered Institute of Patent Attorneys, said that a lack of harmonisation of the grace period "may be harming business and research in the UK and in Europe in comparison to other territories". Many respondents said that grace periods are welcome, because they "allow for the early publication of research results and allow inventors to test the marketability of their inventions and/or attract financing" and also "protect an inventor from the re-disclosure of an invention by third parties to whom the invention is disclosed".
The majority of the companies and trade bodies to reply to the IPO's consultation said they would back a globally recognised grace period lasting a year. Considering the UK Government’s push to promote innovation and the response to this consultation, it would be surprising if there was not now a move to change the law to introduce a US-style grace period in the UK.
This article provides a basic summary about grace periods operated in some countries around the world and is not definitive nor exhaustive. Please contact us if you require more information and advice on this matter.
[1] Status as of September 2013, source: http://www.wipo.int/export/sites/www/scp/en/national_laws/grace_period.pdf
[2] http://www.ipo.gov.uk/response-2013-tegernsee.pdf
