Why do patent grace periods matter?
Procrastinating can be an unforgiveable offense when it comes to patenting. Nearly every country has a timing requirement for filing patents. Tardiness can lead to an irrevocable loss of patent rights. So what is considered late? And how late is too late? Are there any patent grace periods that might give inventors more time to file?
Whose activities matter?
Grace periods are generally applicable to the pre-filing activities of inventors and others connected to the inventors (e.g., third parties who divulged information taken from the inventors). Other types of prior art will typically not qualify for a grace period.
What can trigger the loss of patent rights is an inventor’s own public disclosure or sale of an invention. Revealing an invention to the public or selling it prior to filing a patent application will bar inventors from obtaining patent rights unless a grace period for a desired country applies.
Is the US more lenient than the rest of the world?
Yes, the US has a 1-year grace period that is generally more lenient than the patent laws of most foreign countries. This leniency in the US has benefited both domestic and international patent owners.
Why should US businesses care about foreign patent grace periods?
If the US is your primary market, you might not care about foreign patents at first. Consider, however, whether any product development or manufacturing occurs outside the US.
If your product is developed or manufactured overseas, is there a risk that your business partners may apply for a patent in their country without telling you? If they indeed filed a patent application in a foreign country without your knowledge, it is unlikely they would transfer ownership of the foreign patent to you. So now you face the risk of others blocking you from exporting your goods out of the country of manufacture.
Is there a demand for your product in foreign countries? Do foreign consumers encounter the same problems your product solves? If so, what would be the cost, or lost profits, of competing against generic products in foreign markets? How would those lost profits compare to the cost of patenting in those foreign countries?
Even if you have already disclosed or sold your innovative product, it would be advantageous to know if the window of opportunity to patent in foreign countries is still open. So let’s look at the grace periods, if any, offered in some of the major foreign markets.
What is South Korea’s grace period?
South Korea provides a 1-year grace period for public disclosures other than patent publications. Under Article 30, here are the circumstances where the one-year grace period would apply:
- When a person who has the right to obtain a patent (e.g., inventors or their employers) has caused the invention to be publicly known or worked; or
- When an invention is made known against the intention of the person having the right to obtain a patent.
Keep in mind that the Korean grace period does not apply to patent publications anywhere in the world. So a patent publication prior to the Korean filing date would still serve as prior art.
What is Japan’s grace period?
Japan offers a 1-year grace period. Applicants file with the Japanese patent application a written statement. Within 30 days from the filing date, an applicant must also submit a certificate.
What is China’s grace period?
China has a 6-month grace period that applies under limited circumstances. Article 24 of Chinese Patent Law specifies that the following public disclosures of an invention will trigger a 6-month grace period for filing patent applications in China:
- exhibited for the first time at an international exhibition sponsored or recognized by the Chinese government;
- made public for the first time at a prescribed academic or technical conference;
- contents revealed by others without the consent of the applicant; or
- published for the first time for the purpose of public interest when the country is in an emergency or extraordinary situation (effective June 1, 2021).
International exhibitions recognized by the Chinese government include those registered or recognized by the Bureau of International Exposition (BIE).
Prescribed academic or technical conferences include meetings organized under the China State Council or by the China Association for Science and Technology (CAST).
What is Europe’s grace period?
For utility patents, the European Patent Office (EPO) offers a very restricted 6-month grace period which, as a practical matter, will not benefit most applicants. Article 55 of European Patent Convention provides a 6-month grace period if:
- the prior public disclosure was an evident abuse in relation to the applicant; or
- the applicant displayed the invention at an official international exhibition.
A supporting certificate must be filed with the initial filing of the European patent application.
Germany, however, offers a more lenient 6-month grace period policy, but only for utility models.
For design patents, the European Union Intellectual Property Office (EUIPO) does have a 1-year grace period for designs.
What is Australia’s grace period?
Australia provides a 1-year grace period. No special documents need to be filed in order to take advantage of the Australian grace period.
Summary of Foreign Patent Grace Periods
Here’s a table summarizing patent grace periods in key markets:
|Gracious / Limited
|Length of Grace Period
|Limited for utility
Gracious for design
Practically speaking, a foreign patent office with a limited (i.e., more restrictive) policy will be of little help to most applicants.
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