FOR IP PROFESSIONALS

Grace periods

The grace period allows for public disclosure of an invention (under certain conditions) without affecting the validity of a subsequent patent application (provided that a complete application is filed within 12 months of the disclosure).

Grace periods of one form or another apply in many countries, including Australia, the United States, Japan and Canada but do not apply in others including most European countries.

What the grace period covers

The grace period covers disclosures of an invention made by or with the consent of the applicant or patentee, or disclosures made without the consent of the patentee by another person who derived the information from the applicant or patentee. The grace period may help a patent application succeed in cases where disclosure of an invention has been made by mistake or is ill timed; for example, when the patentee has discussed it with a contractor without a confidentiality agreement.

The disclosures must have been made no more than 12 months before the filing of the complete specification.

Take care when using a grace period

A grace period should not be used as a general strategy for publishing an invention before filing a patent application.

The lack of a uniform grace period or grace period requirements around the world could mean patent applications that rely on grace period disclosures may be invalid in other countries. Also, third parties using an invention in the grace period before a patent application is made will retain their rights to use the invention.

If you wish to rely upon the grace period it is highly recommended that you seek appropriate legal advice.

How does the grace period work?

The grace period may be applied when the validity of your patent or patent application is being considered in examination, opposition or revocation proceedings.

You do not need to take any action to claim the grace period but if your invention is disclosed, you will need to ensure a complete application is filed in time.

Remember the grace period:

  • covers disclosures within a period of no more than 12 months before the filing date of a complete application in Australia
  • will not provide an applicant with an earlier priority date
  • will only apply in relation to disclosures made on or after 1 April 2002
  • is only applied to your patent or application in Australia.

Last Updated: 03/4/2014

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