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Too late to file a patent application?

A basic requirement for patentability is that the invention must be novel (i.e. new) at the time of filing the patent application. This test for novelty is decided against any and all prior disclosures (such as publications, uses and exhibitions) across the world. If an invention has been disclosed before filing a patent application, then generally speaking no patent will be granted. This general rule makes a lot of sense, as it prevents a company today from being granted a patent to a telephone given that Bell first exhibited a working device in 1876.

It is important to understand that the test for novelty takes into account any disclosure by the patent applicant before a patent application is filed. For example, a scientist who has discovered a new cancer drug may disclose his invention in a medical journal paper. If the medical journal is published before the scientist’s employer (a pharmaceutical company) files a patent application, then the scientist’s own paper will generally prevent the new drug from being patentable.

The good news is that all is not lost for a patent applicant that has failed to file a patent application before publically disclosing the invention (at least in several countries). The patent laws of Australia, the United States and Canada for example provide a statutory 12 month “grace period” in which to file a patent application. Under these provisions so long as a patent application is filed within 12 months of the disclosure, that disclosure cannot be used to undermine the novelty of the invention.

Some countries have variations on basic grace period provisions. For example, under Chinese law a grace period may be allowed where it can be shown that the invention was disclosed without the authority of the patent applicant. For example, if our cancer scientist lodged his scientific paper without the authority of his pharmaceutical company employer, then the company may still be granted a patent in China to the new drug. However, if the company authorised the lodgement or was reckless to the lodgement then the grace period is not available.

A grace period is a so-called “savings provision” meaning that the law has been enacted to prevent the accidental loss of a legal right. A grace period provision should never be relied upon in any patent filing strategy, even just for the reason that many countries have no such provision. The gold standard is to always file a patent application before any public disclosure of an invention. Churchill Attorneys has a sound knowledge of Australian and international grace period law. We would be pleased to provide advice on your specific situation.

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