Accident & (Patent) Emergency! What to do when you’ve 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. Therefore, we firmly advise that you keep the invention secret before filing a patent application on the invention.

However, 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 able to obtain patent protection. 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, known as the grace period.

The lists below indicate some of the countries in which it is possible to file a patent application after a disclosure as of October 2021. The lists are not exhaustive. 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). Although the UK and the European Patent Office do not currently have a grace period, the EPO is currently carrying out a consultation on introducing a grace period into European patent practice. Furthermore, grace periods are currently available in some other territories in which patent protection is frequently sought.

Territories which allow a 6 month grace period:
Albania	Andorra	Kazakhstan	Russian Federation	Tajikistan	Uzbekistan	Eurasian Patent Organisation

Territories which allow a 12 month grace period:
Algeria	Argentina^	Armenia	Australia
Azerbaijan^	Bahrain	Barbados	Belarus
Belize	Bhutan	Bolivia	Brazil
Canada	Chile^	Colombia	Costa Rica
Dominica	Dominican Republic	Ecuador	El Salvador
Estonia	Ethiopia	Georgia	Ghana^
Guatemala	Honduras	Japan	Jordan^
Kenya	Kyrgyz Republic	Latvia	Malaysia
Malta	Mauritius^	Mexico	Morocco
Mozambique^	New Zealand	Nicaragua	Oman
Papua New Guinea	Paraguay	Peru	Philippines^
Republic of Korea	Sri Lanka^	Thailand^	Trinidad and Tobago^
Turkey	Uganda	Ukraine	Uruguay
USA	^ disclosure not to be taken into account in determining novelty

The exact way in which the grace period operates varies between territories.

For example, some territories, including Australia, China and India, provide specific grace periods for particular types of disclosure, such as disclosures in certain scientific papers or disclosure for the purpose of testing.

If you would like to explore the options for filing in a particular territory, we would recommend speaking to a local patent attorney, which Wynne-Jones can do on your behalf.

Grace Periods - Other forms of Intellectual Property

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 (correct as of December 2021). 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

Czechia

Germany

Hungary

Romania

Slovakia

Additionally, some territories only require there to have been no disclosure of the invention in that territory. In other words, a self-disclosure outside of the territory will not prevent you from obtaining a utility model in the territory.

Alternatively, some territories allow grace periods for the filing of registered designs. For example, Registered Community Designs in the European Union are entitled to a 12 month grace period after a disclosure to the public in which an application for registration may be filed.

Conclusions

So, 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 and Max Bertrand, Wynne-Jones IP Limited