We often find ourselves in conversations with clients who have disclosed their products and ideas without considering the IP implications.  Typical examples include companies publishing press releases for upcoming products, researchers publishing papers and small businesses discussing projects with potential partners.

While it is certainly not best practice to think about IP protection after disclosure, depending on the circumstances it may still be possible to protect your IP and leverage value into your business.

Over the next few weeks we will be looking at how we help companies create value in their business when they thought they missed the boat on IP.  This week we are looking at the grace period provisions in Australia for filing patents.

Grace Periods

Unlike many jurisdictions, Australian patent law allows disclosures by the applicant before filing to be disregarded in the consideration of patentability in certain situations.  This is known as a ‘grace period’.

Grace periods are not unique to Australia.  The United States, Canada and Japan all have versions of grace periods.  However, in Australia there are several specific considerations which require the grace period provisions to be navigated carefully.

Here is a brief summary of the grace period provisions in Australia and our Top IP Practice Tips if you find yourself having to rely on them:

What does the law say?

Australian patent law allows that disclosures made:

  • by the applicant;
  • with the consent of the applicant; or,
  • without the consent of the applicant when the information was obtained from the applicant;

are disregarded in the assessment of novelty, inventive step and innovative step for a complete application filed by the applicant within 12 months of the disclosure.

Some important points to remember:

1.  Disclosure date triggers the filing date for a complete application

The disclosure triggers the time period for filing a complete application.  For a PCT application entering Australia, the filing date is the filing date of the PCT application.  Therefore, if a priority filing is made soon after disclosure you will not be able to use the full 12-month convention term for filing the complete application from the priority filing since that complete application will then be filed more than 12 months from the disclosure date and so outside the grace period.

2.  The grace period does not establish a priority date

Importantly, independent third-party disclosures are not excluded from consideration.  Such disclosures will be available for novelty and inventive step consideration if disclosed before your filing date.  If you decide you want to file in Australia, do it quickly after your disclosure to avoid intervening publication by third parties.

3.  The circumstances around the disclosure are irrelevant

As long as the disclosure was made in line with the provisions above, the reason for the disclosure is irrelevant, for example whether it was intentional or unintentional.

4.  Grace periods do not apply for registered design rights in Australia

Grace periods apply to complete patents only.

Practice Tips

We do not recommend relying on the grace period provisions in Australia, reserve them for emergency cases only.  However, if you find yourself having to rely on grace period provisions here are our Top IP Practice Tips:

  1. If you decide to use the grace period, file your patent application quickly after disclosure. Remember, your disclosure does not trigger a priority date and so independent third-party disclosures before your filing date are not excluded from consideration.  File before anyone else discloses.
  2. Set up your reminders for filing the complete application from the disclosure date.
  3. Create a detailed note of the circumstances of the disclosure as soon as possible. Include details of where and when the disclosure was made, by whom, as well as the content of the disclosure.  The patent office will not ask for this if they don’t discover the disclosure, but it may be useful in the future if the patent it is ever contested.

If you have disclosed your product and you are concerned you have missed the opportunity for IP protection get in touch and we’ll help you find opportunities to protect the value in your IP.

 

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