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

One of the cornerstones of the patent system in many countries, including the UK, is the need to apply for a patent before disclosing your invention publicly. This is because such ‘self-disclosure’ can be used to invalidate a subsequently filed patent application. That’s a horrible situation, because you may have really shot yourself in the foot in terms of getting patent protection in the UK and in many other countries. Therefore, we firmly advise that you keep the invention secret before filing a patent application on the invention.

But, in the real world these things can happen. So what can you do if 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 an application. For example, what was disclosed may not be the actual invention as later 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, it may still be possible to validly file a patent application.

Grace Periods - Patents

It is also 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 – namely within 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. Disclosures within the grace period are not taken into account as prior art in determining novelty or inventive step of the invention in the patent application (in some countries this applies in determining only novelty). You will note that the UK and the European Patent Office do not have a grace period, but some economically very significant countries do.

 * for disclosures made before 9 December 2017

^ disclosure not to be taken into account in determining novelty

** for disclosures made on or after 9 December 2017

Grace Periods - Utility Models

Another option is to look at filing a utility model (also known as a utility patent). 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).

The list below indicates some of the countries where 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.

There may be other options too, which take advantage of certain ‘quirks’ in the IP laws of some countries. 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 point to take away is 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.

Dr Ian Lambert, Rebecca Quiney, and Dr Susanna Stephen, Wynne-Jones IP Limited

© Wynne-Jones IP Limited 2019