Exploiting the novelty grace period

0
136

BY JAGANNATHAN ARUMUGAM

IN general, patents are territorial, as a patent is a set of exclusive rights by a Government body granted to an inventor over an invention for a limited time period in return for disclosing the invention to public.

Even though each country follows a different procedure for granting a patent, all of them have agreed to implement a common set of requirements for granting a patent, which are novelty, inventive step and industrial applicability.

Novelty has a peculiar quality when compared to inventive step and industrial applicability. In order to kill the inventive step of an invention, information disclosed in any part of the world by any person can be used.

On the other hand, novelty of an invention can be destroyed using the information disclosed by the inventor before filing a patent application for the invention.

In layman’s words, an invention is considered to be ‘Novel’ or to satisfy the ‘Novelty’ requirement, if it has not been known to the public before a patent application is filed by the inventor at a patent office.

“Ignorantia juris non excusat” (Latin for “ignorance of law excuses no one”) is a common principle in every legal system around the world.

However, as the famous saying “To every rule there is an exception”, novelty is an exception to this principle. Many countries provide a grace period for filing a patent application after disclosing the invention to the public, but not without conditions.

The grace period varies among countries and is allowed with different criteria. The disclosure by the inventors can be categorised into: Indirect disclosure, Direct disclosure and Commercial use.

Indirect disclosure

Many of the countries allow grace period only to protect the inventor/ applicant’s interest against a catty third party who may have obtained the information about the invention through the inventor/applicant and has disclosed the same without a proper permission from the inventor/applicant.

In spite of being considered as the most stringent patenting authority, the European patent office allows a six-month grace period for filing a patent application, if the disclosure is made by an unauthorised third party who has no permission from the inventor to disclose the invention.

In this matter, the US Patent & Trademark Office (USPTO) allows a grace period of one year which is calculated from the priority date of the patent application.

On the other hand, the Indian patent office takes the most direct approach in this case, wherein, instead of providing a grace period to file a patent application, it has stated that an inventor does not lose the novelty if it is proved that the disclosure was made through fraudulent obtaining and also that the inventor has filed the patent application immediately after getting to know about the unauthorised disclosure by a fraudulent third party.

Direct disclosure

Some of the countries have an approach that is favourable towards the inventors, wherein the inventors are allowed to disclose the invention to potential sponsors without destroying the novelty of the invention.

By this way, it is much more helpful for inventors who are not aware of the patent requirements, students/researchers who want to present their research results and companies or individuals looking to attract sponsors by promoting the inventions in an international exhibition.

Like the previous case, the European patent office allows a six-month grace period, if the inventor has disclosed the invention in an official international exhibition. Some other countries like India allow a grace period, if the disclosure is also through testing of invention in a public place, communication of invention to a Government agency for obtaining an approval of the invention and the like.

Commercial Use

A very few countries like US, have much more lenient approach, wherein the inventor is allowed to work an invention on a commercial scale without destroying the novelty of the invention during a grace period. This grace period is mostly exploited by the inventors/applicants who are looking to assess the commercial value of the invention before investing their money for obtaining a patent.

Although many countries allow grace periods to protect novelty of an invention under various circumstances, an inventor should always keep in mind that patents are territorial, which means that a grant of patent for an earlier disclosed invention in one country does not guarantee a patent in another country. For example, a product commercially launched within one year before the priority date may be allowed a patent in US, but the same cannot be granted in India and similar countries.

Similarly, an inventor publicly disclosing an invention by six months before the filing date may get a patent granted in Malaysia, whereas a convention application filed in Europe based on the Malaysian application will be rejected on the basis of lack of novelty.

However, a convention application filed in US within 12 months from Malaysian application date is eligible for a patent. Furthermore, some countries like Indonesia provide grace period only for disclosures happened within the corresponding territory. For example, disclosures happened in other countries may act as prior art for a patent application filed in Indonesia, irrespective of whether the grace period has expired or not.

As any other law, patent acts are also subject to amendments, and therefore the grace periods in these countries are also subject to change. Furthermore, these grace periods are allowed for an inventor only if the disclosure is derived from the same inventor, whereas disclosures of other independent inventors can still act as prior art.

NOTE: Jagannathan Arumugam is a Senior Patent Executive at KASS International, an established intellectual property firm with offices in Malaysia, Singapore and Indonesia. He specialises in the drafting and prosecution of patent applications in the areas of electronics (including home appliance, personal care appliance, 3D printer, smart card, wearable devices, industrial automation, Image processing, biometrics and CPU architecture) and communications (telematics, cloud computing and mobile payments). For more information, visit www.kass.asia or drop an e-mail to kass@kass.asia.