If an invention is publicly disclosed before a patent application is filed it can be difficult to gain patent protection. The grace period allows for public disclosure of an invention (under certain conditions) without affecting the validity of a subsequent patent application in Australia. The grace period will only apply if an application for a standard patent is filed within 12 months of the public disclosure.
Grace periods of one form or another also apply in other countries including the United States, Japan and Canada. However other countries do not have an equivalent provision. Most European countries do not have a grace period.
Note: provisions also exist that cover other types of disclosures prior to a patent application being filed, including “recognised exhibitions”, “learned societies”, and “reasonable trial of invention”. The circumstances under which these provisions apply are very limited and it is highly recommended that you seek appropriate legal advice as to your options in any particular case.
What the grace period covers
The grace period covers public disclosures of an invention made:
- by the applicant
- with the consent of the applicant
- without the consent of the applicant.
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, the applicant may have discussed their invention with a contractor without having them sign a confidentiality agreement.
The disclosures must have been made no more than 12 months before the filing of an application for a standard patent in Australia. The 12 month grace period generally does not apply to provisional applications – if an application for a standard patent is filed in Australia claiming priority from an earlier provisional application the grace period will usually calculated from the filing date of the application for a standard patent. However different provisions may apply depending on your specific circumstances and we recommend that you seek legal advice as to whether these apply in your case.
The grace period only applies to disclosures made on or after 1 April 2002.
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.
While it may allow you to gain patent protection in Australia, 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.
The grace period does not provide an applicant with an earlier priority date.
If you wish to rely upon the grace period it is highly recommended that you seek appropriate legal advice.
How the grace period works
You do not need to formally apply to claim the grace period. However, if your invention is publicly disclosed you will need to ensure an application is filed within the 12 month time limit.
The grace period may be taken into account during the examination, opposition or revocation proceedings of your patent application.