Grace periods for patent publications
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Message: Grace periods for patent publications
Grace periods for normal publications
Normally, any publication before the filing date of the patent
application counts as prior art. This includes publications made by
the inventor himself. So, an inventor who wants to put a product on
the market must file one or more patent application(s) first. However,
as filing patent applications can be very expensive it is not always
possible for an inventor, especially a small one, to protect his new
product adequately before going to market. Once sales of the product
start taking off, he might earn the money to afford patent
applications, but by then it will be too late, as his publicly
available product discloses all the features of the invention(s) he
wants to patent and so with count as prior art against those patent
applications.
Some countries regard this situation as unfair, and have special
provisions in their patent laws that offer a "grace period".
Publications made during the grace period, which is usually expressed
as a number of months before the day of filing, are disregarded when
determining the state of the art. For example, the USA does not regard
publications made less than a year before the filing of the U.S.
application as prior art (35 US Code 102(b)), regardless of who made
the publication. Japan provides a six-month grace period, but only for
publications by the inventor himself (section 30 of the Japanese
Patent Law).
Of course any such grace periods only apply in those countries. If a
U.S. inventor publishes his invention and three months later files a
patent application on it in the USA, Japan and Europe, the European
patent application will be rejected because it is not novel in the
light of the inventor's publication. European patent law does not have
a grace period.
Grace periods after unauthorized disclosures
Another situation in which a grace period may be helpful is when a
third party is told something about the invention in secret (for
example, under a nondisclosure agreement) and then violates the NDA by
revealing his knowledge to the public. This disclosure normally counts
as prior art, if done before the filing date. But again, it would be
unfair to have this count against the inventor. Some patent laws
therefore give inventors a limited time to file a patent application
after such a violation occurs. If the application is filed in that
time period, the disclosure by the third party does not count as prior
art.
Grace periods relating to international exhibitions
A disclosure made at a recognized international exhibition such as the
World Expo also does not count as prior art (article 11 of the Paris
Convention), although a certificate proving that the invention has
been so displayed is usually required to be submitted to the patent
office. This exception does not apply to any exhibition, but only to
official or officially recognized exhibitions, as set out in the
Convention on international exhibitions of 1928.
A special case: earlier filed patent applications
When someone files a patent application on an invention, other patent
applications on the same invention may have been filed earlier. If the
later patent application was filed before the earlier applications or
patents were published (which normally happens 18 months after filing,
or upon grant), the earlier applications do not count as prior art in
the normal sense. However, this would lead to the situation that two
people would obtain a patent on the same invention, which is
undesirable. For this reason many countries have special provisions
for earlier filed patent applications that were not published before
the day of filing of the later application. Such patent applications
are sometimes referred to as "prior rights".
Prior rights under European patent law
The prior art status of a prior right is not necessarily the same as
the status of a published document. Most European countries explicitly
state in their patent laws that prior rights may only be used to prove
that an invention was not novel. If the invention as claimed in the
later application differs even slightly from the prior right, it is
novel and no further objections may be raised based on the prior right
(article 56 EPC). Such a small difference is considered to be enough
to make the later invention a "different" one. This way, it is
prevented that two people, or even a single inventor, could obtain
multiple patents on the same invention.
Prior rights under US patent law
U.S. patent law uses a different approach. 35 US Code section 102(e)
states that U.S. patents filed before the date of invention can be
prior art. A requirement is that the U.S. patent in question is
published, either as a granted patent or as a patent application. If
this is the case, and the filing date is sufficiently early, the
earlier patent or application counts as prior art and can be used to
attack both novelty and obviousness of the later application.
Normally, any publication before the filing date of the patent
application counts as prior art. This includes publications made by
the inventor himself. So, an inventor who wants to put a product on
the market must file one or more patent application(s) first. However,
as filing patent applications can be very expensive it is not always
possible for an inventor, especially a small one, to protect his new
product adequately before going to market. Once sales of the product
start taking off, he might earn the money to afford patent
applications, but by then it will be too late, as his publicly
available product discloses all the features of the invention(s) he
wants to patent and so with count as prior art against those patent
applications.
Some countries regard this situation as unfair, and have special
provisions in their patent laws that offer a "grace period".
Publications made during the grace period, which is usually expressed
as a number of months before the day of filing, are disregarded when
determining the state of the art. For example, the USA does not regard
publications made less than a year before the filing of the U.S.
application as prior art (35 US Code 102(b)), regardless of who made
the publication. Japan provides a six-month grace period, but only for
publications by the inventor himself (section 30 of the Japanese
Patent Law).
Of course any such grace periods only apply in those countries. If a
U.S. inventor publishes his invention and three months later files a
patent application on it in the USA, Japan and Europe, the European
patent application will be rejected because it is not novel in the
light of the inventor's publication. European patent law does not have
a grace period.
Grace periods after unauthorized disclosures
Another situation in which a grace period may be helpful is when a
third party is told something about the invention in secret (for
example, under a nondisclosure agreement) and then violates the NDA by
revealing his knowledge to the public. This disclosure normally counts
as prior art, if done before the filing date. But again, it would be
unfair to have this count against the inventor. Some patent laws
therefore give inventors a limited time to file a patent application
after such a violation occurs. If the application is filed in that
time period, the disclosure by the third party does not count as prior
art.
Grace periods relating to international exhibitions
A disclosure made at a recognized international exhibition such as the
World Expo also does not count as prior art (article 11 of the Paris
Convention), although a certificate proving that the invention has
been so displayed is usually required to be submitted to the patent
office. This exception does not apply to any exhibition, but only to
official or officially recognized exhibitions, as set out in the
Convention on international exhibitions of 1928.
A special case: earlier filed patent applications
When someone files a patent application on an invention, other patent
applications on the same invention may have been filed earlier. If the
later patent application was filed before the earlier applications or
patents were published (which normally happens 18 months after filing,
or upon grant), the earlier applications do not count as prior art in
the normal sense. However, this would lead to the situation that two
people would obtain a patent on the same invention, which is
undesirable. For this reason many countries have special provisions
for earlier filed patent applications that were not published before
the day of filing of the later application. Such patent applications
are sometimes referred to as "prior rights".
Prior rights under European patent law
The prior art status of a prior right is not necessarily the same as
the status of a published document. Most European countries explicitly
state in their patent laws that prior rights may only be used to prove
that an invention was not novel. If the invention as claimed in the
later application differs even slightly from the prior right, it is
novel and no further objections may be raised based on the prior right
(article 56 EPC). Such a small difference is considered to be enough
to make the later invention a "different" one. This way, it is
prevented that two people, or even a single inventor, could obtain
multiple patents on the same invention.
Prior rights under US patent law
U.S. patent law uses a different approach. 35 US Code section 102(e)
states that U.S. patents filed before the date of invention can be
prior art. A requirement is that the U.S. patent in question is
published, either as a granted patent or as a patent application. If
this is the case, and the filing date is sufficiently early, the
earlier patent or application counts as prior art and can be used to
attack both novelty and obviousness of the later application.
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