Patent Emergency! What to do when you’ve (accidentally) disclosed your invention before you’ve filed a patent application

Importantly, you should not assume there is nothing you can do. Please talk to your patent attorney. It may still be possible to validly file. For example, what you disclosed may not be the actual invention that would be defined in the claims of your patent application. In that case, you may still be in the game. Also, if your disclosure was confidential or if a disclosure was made as the result of an abuse, such as a breach of confidence, then it may still be possible to validly file a patent application.

Grace Periods- Patents

It is also very useful to know that in some countries it is possible to make a self-disclosure and still validly file a patent application within a period of time after the self-disclosure. This period of time where you can still file for patent protection is called the grace period.

The lists below indicate some of the countries in which it is possible to file a patent application after a disclosure. The lists are not exhaustive. Some countries stipulate that an application must be filed within six months of the disclosure while others allow a more lenient 12 months grace period. You will note that the UK and the European Patent Office do not have a grace period but some countries that are economically very significant do.

Countries which allow a 6 month grace period

Albania                              Andorra                              Japan

Russian Federation         Uzbekistan                         Eurasian Patent Organisation

Countries which allow a 12 month grace period

Grace Periods- Utility Models

Another option is to look at filing a utility model. A utility model is an IP right which is generally similar to a patent. It has a similar written description to a patent and it has patent claims. Generally, the term of protection for a utility model is less than for a patent, but it will still provide protection for a number of years (commonly 10 years). Sometimes a different term is used to describe a utility model, such as a ‘utility patent’.

The lists below indicate some of the countries in which it is possible to file a utility model after a disclosure. For simplicity, we do not show countries where it is already possible to file a patent application having the same grace period.

Countries which allow a 6 month grace period

Austria                                 Bulgaria                               Czech Republic

Germany                             Hungary                               Romania

Slovak Republic

There may be other options too, which take advantage of certain ‘quirks’ in the IP laws of some countries. However, we cannot guarantee that the lists above are complete and totally correct as countries’ laws may change. Also, the exact way in which the grace period operates varies from country to country. For example, some countries place certain requirements on the patent applicant.

Conclusions

So, the main points to take away are that, even if you have publicly disclosed your invention before filing a patent application, all may not be lost. However, it is important to talk to your patent attorney as soon as possible after you realise you have made a self-disclosure. In this way, you can ensure that the correct steps are taken to maximise your position.

By Ian Lambert and Rebecca Quiney