In principle, a patent application for a technical invention must be filed at a patent office before the invention has been made available to the public.

The disclosure of the invention is “prior art” to the patent application and will be considered when assessing if the claimed invention meets the requirements of novelty and inventive step. Please remember that “a leaf in the forest constitutes a public disclosure even if the wise man hid it there”.

Notwithstanding the above, there are some, albeit a small number of jurisdictions, which still operate a “grace period” provision (6 or 12 months) where if a patent application is filed within a prescribed period of time after publication of the invention, the publication itself is not considered to constitute prior art when assessing patentability of the application.

Patents – example countries with12 months grace period provision:

Argentina (AR); Argentina (AR); Brazil (BR); Canada (CA); Chile (CL); Columbia (CO); Estonia (EE); Japan (JP); South Korea (KR); Malaysia (MY); Mexico (MX); Peru (PE); Philippines (PH); Turkey (TR); United States of America (US); and Singapore (SG).

Patents – example countries with operate 6 months grace period provision:

Albania (AL); Eurasia (EA); Japan (JP); Russian Federation (RU); and San Marino (SM)

European Patent Convention (EPC) Member States

A very small number of European Patent Convention (EPC) member states operate a patent grace period.

In order to benefit from the grace periods in EPC member states it is important to file patent applications in each state either directly or via a PCT application – not via the European Patent Office (EPO) rout.

Estonia (12 months); Turkey (12 months); Albania (6 months); and San Marino (6)

Watch out when relying on a grace period?

Remember: a grace period must not be used as a routine strategy for disclosing an invention before filing a patent application.

While it may allow an applicant to gain patent rights in a small number of jurisdictions, patent applications that rely on grace period disclosures would be held to be invalid in the majority of other jurisdictions which do not support such a provision.

Importantly, third parties using an invention in the grace period, before a patent application has been filed, may retain their rights to use the invention.

Regretfully, the grace period cannot provide an applicant with an earlier priority date.

How does the grace period work?

You do not need to formally apply to claim the grace period when filing your patent application.

However, if your invention is publicly disclosed you will need to ensure an application is filed within the prescribed 6 or 12 months strict time limit – depending on the particular jurisdiction.

The grace period would be considered during the examination, opposition or revocation proceedings of the patent application.