Publications are the currency of academia but can reduce the chances of successfully commercialising a new technology. Why? Well public disclosure of an invention means the invention is no longer novel. With novelty being a key patentability criterion, public disclosure can scupper your chances of getting a patent before you even apply. However, some countries allow public disclosure provided an application is filed within a set period afterwards. This saving grace is called a grace period.
This article is published in Chemistry in New Zealand (CiNZ), the journal of the New Zealand Institute of Chemistry (NZIC). The NZIC represents members involved in the chemistry profession including those who study, practice, teach, promote and manage chemistry.
A public disclosure of an invention doesn’t only mean publication in a journal article. It can be any kind of non-confidential communication to the public which reveals the existence of the invention or enables a skilled person to reproduce the invention. Other forms of public disclosure include:
- Conference proceedings
- Internet articles or photographs
- Exhibitions or trade shows
As a general rule, inventions should be kept confidential until after filing a patent application (or actively deciding not to file a patent). This ensures the inventor has the opportunity to obtain patent rights in the broadest range of countries.
Once the invention has been publicly disclosed then this disclosure is considered “prior art” and taken into account when the examiner assesses the novelty of the invention. If the disclosure occurred within the grace period offered, this means that the disclosure is not considered prior art and therefore does not compromise novelty.
No turning back the clock
If the invention is disclosed by the inventor, or with the permission of the inventor, then some countries don’t offer a grace period at all (unless certain conditions are met). This means that for the following countries a valid patent cannot be granted:
- European Patent Office (EPO)
- New Zealand
- South Africa
The recently abandoned Trans-Pacific Partnership Agreement was slated to require New Zealand and all other TPPA signatories to provide a 12-month grace period. Recent reports indicate that the TPPA could be revived in its final form by simply excluding the USA. If so, New Zealand and Japan could still implement a 12-month grace period.
Exceptions to the rule
Although there is no general grace period offered by the countries mentioned above, in some circumstances they do provide a grace period for disclosures. For example in New Zealand, disclosures at a government approved exhibition (e.g. Fieldays) are not novelty-destroying provided a patent application is filed within six months. Similarly, in China, the EPO and the UK, disclosure of the invention at an international exhibition or meeting officially recognised by the patent authorities does not compromise novelty of the invention, provided an application is filed within six months. In other words, a limited six-month grace period is provided for these specific types of disclosure.
Another exception to the rule of no grace period occurs where the invention is disclosed without the permission of the inventor i.e. unauthorised disclosures. All of the countries listed above allow at least a six-month grace period for disclosures in these circumstances.
Permissive grace periods
Other countries offer a much more generous 12-month grace period for any disclosures by the inventor or with their permission:
- South Korea
While other countries offer a shortened six-month grace period:
This means that any disclosure by the inventor will not compromise novelty in these countries provided an application is filed within the grace period.
So what’s the issue then?
The most common disclosure issue that we come across is disclosure by researchers in academic publications. Even disclosure in a PhD thesis on a library shelf is enough to compromise novelty. The typical requirement of journal articles is to provide a description of the research such that it can be repeated by others in the field. The level of disclosure required to compromise novelty can be even lower than this technical description. For example, mere mention of the invention or posting photos online might be enough to enable a skilled person to reverse engineer the invention and this could compromise novelty.
One result of an inadvertent disclosure of the invention may be that a patent examiner will search for and find the disclosure (e.g. in a journal article) and refuse to grant a patent because the invention lacks novelty. However, even if the examiner is unaware of the disclosure, other risks arise that can come back to bite a patent owner long after a patent is granted. If the patent covers a commercially successful invention then competitors may want to challenge the patent in an attempt to have it invalidated. These competitors often go to great lengths to find novelty-destroying prior art. Searches of old websites, conference proceedings, and ex-employees are all sources of potentially invalidating disclosures.
Assessing and addressing public disclosures early in the patent process is preferable to having to address them later on, once money has been invested in the patent portfolio and commercialisation.
A further factor to consider is that the United States Patent and Trademark Office (USPTO) (and some other patent offices) obliges patent applicants to disclose any prior art disclosures they are aware of that may be relevant to the patentability of the invention. If relevant public disclosures are intentionally withheld, this constitutes fraud on the patent office and can lead to the entire patent being rejected or invalidated. For some companies that rely on IP as a key competitive advantage, this can damage confidence, profits and funding opportunities.
Grace periods are not a panacea for all disclosures
In summary, grace periods can provide the inventor with a limited term safety net that enables a patent to still be pursued in some countries. However, they should not be thought of as an alternative to a properly considered patent filing and disclosure strategy. This is partly because the grace period provisions are different in each country and change regularly. This means additional time and cost will be required to assess the position in each country and attempt to urgently remedy the situation. In addition, losing the chance to obtain patent rights in certain countries can damage investment opportunities as well as investor confidence.
The answer therefore is to carefully consider each proposed public disclosure before it is made. Tech transfer offices and IP professionals should be the first port of call to discuss the disclosure of research or inventions with commercial potential.