04/07/2014
In general, making a public disclosure of an invention before the filing or priority date of a patent application makes obtaining protection for that invention complicated. If protection is still available, you will probably need to rely on what are known as grace period provisions, which where applicable, avoid the prior public disclosure of the invention being taken into account for an assessment of patentability (usually, patents are only granted for new inventions, and a prior disclosure means the disclosed invention is no longer new).
Unfortunately, patent law is not harmonised around the world, and as a result, some countries do not provide grace periods. Furthermore, the length of available grace periods and the type of disclosure to which grace periods apply vary considerably . Consequently, this will mean you will not be able to obtain valid patent protection for already disclosed concepts in countries such as the UK, and in Europe (via a European Patent under the European Patent Convention).
While it would perhaps be preferable if the IP community could harmonise the provisions relating to grace periods, and even provide grace periods where none exist, a harmonised approach to the problem is a long way off. It is always therefore best to ensure that inventions remain secret at least until a patent application is filed for it.
Countries Which Provide Grace Periods
The World Intellectual Property Organisation in Geneva provides a full list of countries which provide grace periods for various types of prior public disclosures. Probably the most well known country which operates a 12-month grace period is the United States of America where any disclosure made one year or less before the effective filing date of the claimed invention is excluded from being prior art, provided that:
(A) it is made by the inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor, or
(B) the subject matter disclosed by the third party had, before such disclosure, been publicly disclosed by the inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor.
Therefore, in the US, you can still validly file a patent application within one year of the initial disclosure yesterday.
Strategy For Countries Without Grace Periods
For countries where grace periods are not provided, this does not necessarily mean that you will not be able to obtain some protection for your invention. For example, if the public disclosure was only conceptual and lacked sufficient detail to enable a person familiar with the technological area (the notional skilled person) to carry out your invention, then protection for the more detailed aspects of your invention, or for further developments of those aspects, might still be possible.
It is also worth considering other IP rights, such as registered designs and utility models, where grace periods may generally be more widely available than for patents.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
