As South East Asia becomes an increasingly popular patent filing destination, we explore the region’s grace period provisions and their limitations.
An innovation is generally not patentable if it has been publicly disclosed before patent protection is applied for. Commercial interests however often compete with non-disclosure. For example, showcasing prototypes in trade exhibitions early for market feedback may be important from a product development perspective. Sometimes experimentation for research and development purposes may be an unavoidable part of product development.
Some countries offer a “grace period” which, with conditions, guards patentability against self disclosure by inventors or patent applicants, and sometimes unauthorised disclosure by a third party, provided that patent protection is applied for before the grace period expires. While grace periods can sometimes be useful in avoiding prior art, it should not be routinely relied upon for late-filing for patent protection because of various limitations.
South East Asia
Below we consider the grace period provisions of six selected South East Asian countries: Indonesia, Malaysia, Philippines, Thailand, Vietnam and Singapore. A table comparing their grace periods is set out below.
Click here to view table.
Similarities and differences
In all six countries considered, grace period provisions exist and are generally applicable to both self and unauthorised disclosure. The grace period is generally 12 months, with the exception of only a 6 month grace period in Vietnam and for self disclosure in Indonesia.
Grace period provisions however often come with limitations. Further, different countries impose different limitations. For examples:
- In Philippines and Thailand, grace period provisions apply to novelty consideration only.
- In Indonesia, Vietnam and Singapore, self disclosure guarded by grace period provisions is limited to certain circumstances, such as use of invention for research and development purposes, or display of invention official or officially recognized international exhibition, or disclosure before and published by a learned society.
- In Malaysia, unauthorised disclosure guarded by grace period provisions is limited to where there is an abuse of the patent applicant’s rights.
Note that the above examples are non-exhaustive and there are often additional limitations. It is therefore important to seek a patent attorney’s advice if grace period provisions are to be relied upon.
As mentioned, even with the existence of grace period provisions, patent applicants are generally advised against delaying patent lodgement. First, grace period provisions often only guard against disclosure derived from the inventors (be it self or unauthorised disclosure). Independently developed innovations will still be prior art. Second, law on grace periods may change over time. It may be difficult or time consuming to keep track of changes in law in all your markets. Third, some jurisdictions (e.g. Europe) simply do not have grace period provisions. Disclosing before lodgement may therefore geographically limit your patent protection.