I Just Disclosed My Invention – Can I Still Protect It?

A patent may be granted for an invention if it meets all of the statutory requirements including novelty, non-obviousness and utility.  Industrial design protection may similarly be granted for new designs.  In both cases, there is a requirement that the subject matter for which protection is being sought must not already be available to the public.  Steps should therefore be taken to ensure that an early public disclosure does not occur, which may include filing an application as soon as it is practical to do so, requiring third parties to sign non-disclosure agreements, ensuring that experimental use occurs only under controlled conditions, etc.  Unfortunately, competitive pressure, lack of foresight, or even simple ignorance may result in a disclosure being made to the public before an application for a patent or design registration is filed.  This may lead to the question – “can I still protect it?”

The answer to this question depends on the type of protection that is being sought, the specific countries in which protection is desired, and also the nature and the timing of the disclosure that has been made. Generally speaking, fewer options will be available after an invention or an industrial design has been disclosed publicly, but it may still be possible to obtain some useful protection.

Many countries require absolute novelty – any prior public disclosure, regardless of its source, is considered to be novelty-destroying and is thus a bar to patentability or design registrability.  Other countries provide a grace period of six or twelve months prior to the application filing date or the priority date, where applicable. Certain disclosures that have taken place during the grace period may be excluded as prior art, although it may be necessary to divulge the details of the disclosure at the time of filing or shortly thereafter. Grace periods should therefore be viewed as a lifeline to be reached for only after a disclosure has already taken place, and not as part of a more general strategy for delaying the filing of an application.

A comparison of the grace period provisions that are available around the world is beyond the scope of this article.  The following survey therefore focuses on only those countries that are commonly included in our clients’ filing strategies.

Canada 

Patents – There is a one-year grace period prior to the actual filing date in Canada for a disclosure made by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant.  The disclosure is not taken into account in determining novelty and obviousness.

Industrial Designs – There is a one-year grace period prior to the actual filing date in Canada for publication of the design in Canada or elsewhere.

United States

Patents– There is a one-year grace period prior to the effective filing date for disclosures by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.  The effective filing date is the actual U.S. filing date or the filing date of the earliest application for which the application is entitled to a right of priority.

Design Patents – There is a one-year grace period prior to the effective filing date for disclosures by the designer or disclosure by another person who obtained the subject matter disclosed directly or indirectly from the designer.  The effective filing date is the actual U.S. filing date or the filing date of the earliest application for which the application is entitled to a right of priority.

Mexico

Patents – The novelty grace period term is twelve months and is calculated from the Mexican filing date, or from the priority date if the Mexican application claims priority from an earlier filed application.  The grace period applies to disclosures made by the inventor or by the inventor’s successor in title, in a way that makes the invention known by any means of communication, by putting the invention in practice, or by having displayed the invention at a national or international exhibition.

Industrial Designs – The novelty grace period is twelve-months from the Mexican filing date, or from the priority date if the Mexican application claims priority from an earlier filed application.  The grace period applies to disclosures that make the design known by any communication means, putting the design into practice, or exhibiting the design at a national or international exhibition.

Europe

Patents – Limited six-month grace period applies only in cases of evident abuse in relation to the applicant or his legal predecessor, or disclosure of the invention at a recognized international exhibition.

Industrial Designs – There is a grace period of twelve-months measured from the date of filing, or the priority date if priority is claimed.  The grace period applies to disclosures of the design by the designer or subsequent owner of the design.

China

Patents, Utility Models, and Industrial Designs – There is a limited six-month grace period before the date of filing.  The grace period applies to disclosure by any person without the consent of the applicant, display of the invention at specific international exhibitions sponsored or recognized by the Chinese Government, and making the invention public at a prescribed academic or technological meeting.

Japan

Patents – There is a grace period for disclosures that are made by the inventor or the right holder within six months before filing date of the application in Japan.  The grace period applies to any form of disclosure, including sales.

Industrial Designs – There is a grace period for disclosures that are made by the designer or on behalf of the designer within six months before filing the application in Japan.  The grace period applies to any form of disclosure, including sales.

South Korea

Patents – There is a twelve-month grace period for public disclosures that are made by, authorized by, or derived from the patent applicant within twelve months before filing the application in South Korea.

Industrial Designs – There is a six-month grace period for public disclosures that are made by the designer or on behalf of the designer within six months before filing the application in South Korea.

Australia

Standard and Innovation Patents – there is a twelve-month grace period before the filing date in Australia for disclosures by the Applicant, or by a third party who derived the information from the Applicant.

Industrial Designs – No grace period to protect self-disclosure.

disclosure

South America

Many South American countries offer some type of grace period.  The types of disclosure that may be excused, the timing of the disclosure, and the requirements that must be satisfied in order to take advantage of the grace period vary from country to country, and may depend on the type of protection that is being sought.

Brazil provides a twelve-month grace period preceding the filing date of a patent application, or the priority date if applicable, but only a 180-day grace period preceding the filing date of an industrial design application, or the priority date if applicable.

Chile provides a limited six-month grace period before the filing date of a patent or industrial design application.  The grace period in Chile applies only to disclosures resulting from practical tests and construction in the process of preparing the invention, the exhibition of the invention in official or officially recognized exhibition, or abusive and unfair practices suffered by the applicant or inventor.

Argentina provides a twelve-month grace period before the filing date of a patent application, or before the priority date if priority is claimed.  The grace period for patents applies to disclosures made by the inventor or the inventor’s successors in law, by any means except publications made by a foreign patent office.  Argentina also provides a six-month grace period before the filing date of an industrial design application, or before the priority date if priority is claimed.  The grace period for industrial designs applies to disclosures made by the inventor or the inventor’s successors in law by any means of communication.

Conclusion

The length of the grace period, assuming that one is available, the types of disclosures that may be excused, and the requirements that must be satisfied in order to take advantage of the grace period, vary considerably from country to country.  In addition, changes to domestic legislation or ascension to certain international agreements may change the current grace period provisions.

For instance, after Canada joins The Hague System the grace period for industrial designs will be measured from the priority date.  Changes to the grace period provisions in Japan effective April 2012 expanded upon the previously excusable disclosures, which prior to April 2012 could be made only at JPO Commissioner-designated World Fairs, or at JPO or local government-sponsored conferences.  Similarly, the America Invents Act (AIA) switched the United States Patent system to a first-to-file system, which has had a subtle impact on the one-year grace period.  More particularly, the exception for third-party disclosures now applies only to the same subject matter obtained from the inventor.  A subsequent disclosure by the third party that builds on or modifies the original invention, before the original inventor files an application, can be cited against the original inventor’s application.

Due to the complex and fluid nature of the grace period provisions that are available around the world, applicants who have any concern about the possible effects of an early disclosure are encouraged to consult with one of our agents at their earliest possible opportunity.

For more information, contact Mark Weir.