Patent applications grace period

Generally, if the invention has been disclosed to the public, even by one of the inventors, before the filing date of the patent application the invention is no longer novel and so a patent cannot be granted. However, major exceptions to this are in the USA and Canada where a one-year grace period for inventor disclosures applies. Some, more restricted, grace periods apply in other countries such as Japan and Australia. 

The general adoption of a first to file system including a grace period for filing patent applications following disclosure by an inventor, with small entity fee reductions would assist smaller companies and may prevent them from losing patent rights to their irmovative products and processes. 

Some countries have legal provisions accepting the disclosure of the innovation before seeking protection, as long as the patent application is filed within a reasonable period that is predefined in law. This ranges from 6 months (e.g. Japan) to 1 year (e.g. Brazil and the USA). This term is called the grace period. ... 

In spite of the positive aspect conferred by the grace period, it must be noted that not all countries accept this provision or similar procedures. Therefore, even though this possibility exists in Brazil, the filing in other countries that do not accept previous disclosure (the majority of European countries, for example) can be prejudiced. Hence, even in Brazil disclosure before filing a patent application should be avoided. 

An invention may also not be patentable under 102 if certain events (so-called statutory bars) occur more than 1 year before the patent application is filed in the PTO. The statutory bars are designed to encourage the inventor to file his or her patent application in a timely manner. For example, a written description of the invention, a public use, or offer of sale of the subject matter of the invention in the United States more than 1 year before the filing date of the application bars the invention from being patented. An inventor thus has a 1-year grace period after such a public disclosure in which to file a patent application in the United States. 

An invention is novel if it was not part of the prior art before the priority date vide infra) of the patent application that claims the invention. The prior art comprises all oral or written information publicly available before the priority date of the application (in some countries the prior art must be publicly available in those countries). This criterion is essentially absolute everywhere except in the USA, where there is a grace period of 1 year, within which one can file a patent application even if the invention has been earlier divulged, either by the applicant or by another. Novelty is fairly strictly interpreted thus, one can obtain a patent on a compound which is within the scope of an earlier publication, which teaches a generic formula with multiple substituents on a core structural element, but which does not specifically show the now-claimed compound. Thus, to determine novelty, one compares the date of invention (US law) or priority filing date with the divulgation date of the supposed prior art. If the subject matter is the same and the divulgation date of the publication precedes the invention/filing date, then the invention fails the first test and cannot be patented. 

After filing the provisional patent the inventor should be trying to license, sell or otherwise exploit the invention on a confidential non-disclosure agreement with the view that an interested company would within the 1 year period of grace, file the necessary patents in various countries on behalf of the inventor and, or course, pay all the application fees and maintenance fees. If this does not transpire, then it is up to the inventor to pay the application fees which would be classed as a small entity status and is therefore usually half of the regular filing fee. 

---