The IP Perspective with Chris Juhasz

Amazing grace period provisions

I would say that at least half a dozen times so far this year, my initial talks with a new client have gone something like this.

Client (excitedly): Yeah. People are starting to really take an interest in our technology. We have made some sales, are getting positive reviews, and quite a few people have suggested that we should patent it!
Me (hearing Darth Vader’s Imperial March theme and seeing battle smoke in my mind): Excellent! Tell me more.

A patent attorney’s heart is always filled with trepidation when someone says that they have gone to market without having first established their intellectual property position. Putting aside consequences of their actions potentially infringing the rights of others (cue more battle smoke), they may be inadvertently giving up their own IP rights too.

Generally speaking, before a government will grant someone a monopoly over a technology for a period of time (ie a patent), it likes to be fairly sure that a number of requirements are met. Notable amongst these are that the technology must be ‘new’ in the sense that there hasn’t previously been a non-confidential disclosure of the invention.

Such requirements are generally assessed as at the date of filing of a first patent application for the technology. So, if some action has been taken prior to the filing date that will mean that the requirements will not be met – such as a public disclosure via an ad on the Internet, non-confidential chats or a sale – the implication, in the case of the newness requirement, is that valid patent protection may not be possible.

Because of this, if patent protection for technology is desired, an application for it should ideally be in place before public and commercial activities relating to it occur.

The world is rarely ideal, however, and a decision may be made to seek patent protection after such activities have occurred. Although a request sent via some droids to an old Jedi dude in the desert is unlikely to save this situation, this is where, thankfully, in some jurisdictions at least, we may be able to rely on grace period provisions to seek to save rights to technology that may have otherwise been lost.

As with everything, the extent to which grace period provisions may be able to be relied on depends very much on the particular circumstances of the case. That said, the following are some general guidelines for popular jurisdictions that may be of use where someone has publicly disclosed, or commercially used, their technology prior to seeking patent protection for it.

Australia, Canada, and the United States of America have quite generous grace period provisions. Provided that a complete patent application (describing the invention such that, if it was a Death Star, for example, it would be fully operational) for the technology is filed in these countries within twelve months from the date of the first public disclosure or commercial use by the applicant, it should not be a problem in terms of meeting the newness requirement.

For Japan and Russia, a grace period along similar lines is available, but only for a period of six months.

For China, Europe, and the UK, the newness requirements are very strict – and grace periods along the lines of those described for the above countries are not provided. In these jurisdictions, it is only in very few, limited, prescribed circumstances that a first public disclosure will not count against an application filed within 6 months thereof.

So, in some countries, whilst not an Obi-Wan Kenobi, there is at least something that may be called upon to save your IP.

Even so, relying on the grace period (where provided for) is not without risks, as public disclosure prior to filing a patent application can give rise to other problems. For example, a public disclosure could facilitate a competitor taking up or building upon the technology, or perhaps issuing a publication that builds upon the disclosed technology, which then serves as prior art relative to particular refinements or features of the technology.

In what may be found to be particularly disturbing in this regard, competitors taking up the technology in the grace period before the filing of a patent application is made may be able to retain their rights to continue using it.

Accordingly, relying on the grace period should be seen as something to be done in an emergency situation, akin to sending a message for help to a mythical Jedi Master when you are being captured aboard an inter-galactic space ship, rather than prudent IP strategy.

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