Patent laws have a qualitative impact on the working of researchers, inventors, and attorneys. Even a single misconception regarding a rule can cause a big loss. The grace period is one of the important laws which play a very prominent role in the world of the patent.
In this study, we will first learn about the basic concept of the grace period and represent a scenario in which it was impossible to get 102 prior art without using the concept of the grace period.
What Exactly A Grace Period Is?
“Grace period is a specific period of time preceding the filing of a patent application, during which certain types of disclosures of the invention (for which the patent application is filed) do not destroy its novelty.”
These certain types of disclosures may be considered as “non-prejudicial” disclosures. Besides, the grace period is a length of time before the filing date of a patent application during which disclosures of the invention are not considered to be prior art to the application. Once an inventor discloses his invention to the public, he must file a patent application within 12 months. If he fails, he will lose the opportunity to get the patent of his invention.
How A Grace Period Is Helpful?
In general, Novelty is the basic eligibility which has to be fulfilled for determining the patentability of an invention. So, the invention must be “novel” and, thus, not disclosed in the public domain. Therefore, it is prudent for inventors not to publically disclose their invention before file a patent application describing the invention.
However, inventors publically disclose their inventions before filing a patent application unwittingly or purposely during the research & development or on trial stage, by public demonstrate the use or commercial sale, through marketing or advertising, while attempting to secure funding. Fortunately, the grace period allows the inventors to apply for patent protection within a certain time period from the date of first disclosure, sale, or use.
So, the grace period is considered as a recovery tool after a disclosure is unintentionally or accidentally made. It gives time to an innovator to realize to get benefit from their unintentional innovation. It gives time to an inventor to bring improvement in his invention.
It is not wrong to say that the grace period acts as a guard to protect the invention for a fixed period of time. However, the inventor should be very careful about their grace period because once they fail to file a patent within the grace period, they will never be able to protect their invention.
Do All Jurisdictions Have The Same Provisions For A Grace Period?
Grace period protects the inventors from unauthorized, or (in certain jurisdiction) authorized, disclosure of an invention before filing a patent. In general, the grace period is considered as 6 or 12 months for filing a patent application after a disclosure. However, the grace period provisions are unique for each jurisdiction. From the applicant perspective, the difference in grace period provisions sometimes creates an obstacle when filling for the same patent in multiple countries. So, an applicant should make a careful assessment to determine whether or not the grace period applies to their invention. The WIPO has provided the information which seems to be fruitful for those who want to dig deep into the details of grace period for different countries.
A Real Scenario In Which 102 Prior Art Is Obtained Only By Using The Concept Of Grace Period
Here is a scenario where we have performed an invalidation search and come out with a very promising reference just by using the concept of the grace period. The invention was related to a calibration system for vehicles and the subject patent is from German jurisdiction.
We have performed multiple searches using keywords, Classifications (including IPC, CPC, US classes and F-Terms), Citations (both forward & backward citation), inventors and assignees and NPL search. After using all the strategies, we did not come across any promising prior art. There was only one platform left to be explored and that was YouTube.
While searching on YouTube, we came across a video published on the official YouTube channel of the assignee. The publication date of this YouTube video was 8 months before the priority date of the subject patent. As in the given scenario, the subject patent was from German jurisdiction, and considering the grace period rules:
“In principle, Germany does not provide a grace period for the patents. However, according to Section 3(5) of the Patent Act, the disclosure of an invention will not be taken into consideration if it occurred no earlier than the six months before the filing of the application”.
Now, this YouTube video becomes a strong prior art; considering it has exceeded the grace period duration as per German jurisdiction.
There is a general miss-conception that if a reference is disclosed by the applicant within 12 months before filing a patent, it cannot act as prior-art. Rather, it depends on the grace period rules of different countries. A searcher should always keep the concept of the grace period in mind while performing a search.
The awareness of grace period rules associated with different jurisdictions is very important as we have seen, from a process of filing a patent application to invalidating a patent; grace period plays a significant role.
Authored by: Garima Sharma, Research Analyst, Operations Team.