How to salvage a patent in view of disclosure-grace periods in Asia Pacific countries

The grant of a 20-year exclusive monopoly on a patented invention to a patent proprietor is done so in exchange for a full disclosure of the novel and inventive invention and how it may be worked. A consideration as to whether the subject matter of an invention is new, involves an inventive step, and is capable of industrial application, is the primary focus of patent offices around the world. Therefore it is essential that applicants keep their inventions secret and out of the public domain before the earliest filing date to preserve the novel status of the invention.

Despite the best efforts to minimise public disclosure, sometimes inadvertent or thoughtless disclosure prior to filing a patent application does happen. For example, a scientist submitted an abstract describing an invention to a conference without notifying the company (applicant), which was published before the patent application was filed. This kind of prior disclosure can be a serious hurdle to the patentability assessment of a patent application in most countries. However, some countries apply a grace period to disregard certain prior disclosure so that novelty and inventive step of an invention is preserved despite the disclosure. In this article, we explore the grace period in various jurisdictions in the Asia Pacific area, including the Association of Southeast Asian Nations (ASEAN):

The length of grace period and the conditions for disregarding a prior disclosure under the period

Singapore

Does a grace period exist?: Yes

In Singapore, the disclosure of matter constituting an invention shall be disregarded if it occurs later than the beginning of the period of twelve (12) months immediately preceding the date of filing the application, and if the disclosure was made to the public under the following scenarios (as stated in Section 14(4)-(6) of the Patents Act):

1. due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence;
2. in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor;
3. due to, or made in consequence of, the inventor displaying the invention at an international exhibition (“international exhibition” is defined as “an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions”);
4. due to, or made in consequence of, the inventor describing the invention in a paper read by him or another person with his consent or on his behalf before any learned society or published with his consent in the transactions of any learned society (“learned society” is defined as including any club or association constituted in Singapore or elsewhere whose main object is the promotion of any branch of learning or science); or
5. by the inventor, or by a person who obtained the matter directly or indirectly from the inventor. This scenario only applies to inventor-originated disclosures made to the public on or after 30 October 2017.

For a disclosure which qualifies to be disregarded to benefit from the grace period, it will be necessary to submit supporting written evidence at the time of requesting search and examination, responding to a written opinion, requesting for a review of an examination report, or a search and examination report.

The supporting written evidence must be by statutory declaration or affidavit, and must enclose all supporting documents. The statutory declaration or affidavit should contain facts about the contents and date of the disclosure, and the identity of the disclosing entity and its link to the inventor.

Malaysia

Does a grace period exist?: Yes

In Malaysia, a disclosure may be disregarded from the prior art if it occurred within one year before the filing date under the following scenarios (as stated in Section 14(3) of the Patents Act):

1. by reason or in consequence of acts committed by the applicant or his predecessor in title;
2. by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title; and/or
3. by way of a pending application in UK as at the date of coming into force of the Act (Patents Act 291 of 1983).

In order to claim the grace period, the applicant must state in a request for grant of a patent when filing the application (or at any other time) any disclosure which he is aware of and which in his or her opinion should be disregarded for prior art purposes under Section 14(3) of the Malaysian Patents Act. The applicant must state in detail the facts concerning the disclosure, including the date of disclosure, in an accompanying statement.

Indonesia

Does an grace period exist?: Yes

Article 6 of the Indonesian Patents Act states as follows:

An invention is not deemed to have been announced, if within a period of six (6) months prior to the Filing Date, the invention has been:

1. exhibited in an official exhibition or in an exhibition that is recognised as an official exhibition, both held in Indonesia or abroad;
2. used in Indonesia or abroad by Inventor in the frame of an experiment with the purpose of research and development; and/or
3. announced by the Inventor in:
   1. Scientific session in an examination and/or test phase of a thesis, a dissertation, or other scientific works; and/or
   2. Other scientific forum for discussions on the results of researches in educational institutions or research institutions.

In addition, there is a grace period of twelve (12) months prior to the filing date, for disclosure that occurred when another party publishes the invention in a manner violating his/her obligation to keep the invention confidential.

Philippines

Does a grace period exist?: Yes

In the Philippines, Rule 205 of the Philippines Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs, on Non-prejudicial Disclosure, recites that, the disclosure of information contained in the application during the twelve (12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by:

1. The inventor or any person, who, at the filing date of the application, had the right to the patent;
2. A foreign patent office, the Bureau, or the Office, and such information was contained in:
   1. another application filed by the inventor and should not have been disclosed by the Office; or
   2. an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor; or
   3. A third party which obtained the information directly or indirectly from the inventor, provided further that all foreign patent offices that publish pending patent applications, as well as the World Intellectual Property organization (WIPO) which publishes patent applications filed through the Patent Cooperation Treaty (PCT) are excluded therefrom.

Thailand

Does a grace period exist?: Yes

In Thailand, there is a grace period of twelve (12) months before the date of filing for disclosure of the subject matter or details of the invention due to or in consequence of any unlawful act, or for disclosure by the inventor, for example, display of the inventor’s work in an international or an official public exhibition.

Vietnam

Does a grace period exist?: Yes

As from 14 January 2019 (the effective date of the Comprehensive and Progressive Tran-Pacific Partnership Agreement (CPTPP) in Vietnam), the novelty grace period is twelve (12) months prior to the filing date, and is applied to all circumstances of invention disclosure made by the patent applicant or by a person that obtains the information directly or indirectly from the patent applicant.

According to the amended Circular No. 01/2007/TT-BKHCN of the Ministry of Science and Technology (Rule 25.5.d), to enjoy the benefits of the novelty grace period in Vietnam, the applicant needs to submit documents related to the invention disclosure at the time of filing the application in Vietnam, or as a supplement to the application after filing.

Brunei

Does a grace period exist?: Yes

In Brunei, there is a grace period of twelve (12) months immediately before the date of filing for disclosure of the matter constituting an invention under the following scenarios (as stated in Section 14(4) of the Brunei Patents Order 2011):

1. The matter was directly or indirectly obtained unlawfully or in breach of confidence from the inventor;
2. The invention was displayed by the inventor at an international exhibition; and/or
3. The inventor described the invention in a paper read by him or another person with his consent or on his behalf before a learned society, or published with his consent in the transactions of a learned society.

Cambodia

Does a grace period exist?: Yes

In Cambodia, according to Article 6 of the Law on the Patents, Utility Model Certificates and Industrial Designs of the Kingdom of Cambodia, there is a grace period of twelve (12) months prior to the date of filing for disclosures by reason or in consequence of acts committed by the applicant or his predecessor in title, or of an abuse committed by a third party with regard to the applicant or his predecessor in title.

Sri Lanka

Does a grace period exist?: Yes

In Sri Lanka, according to Section 64(3) of the Intellectual Property Act, No. 36 of 2003, there is a grace period of twelve (12) months prior to the date of filing for disclosures in consequence of acts committed by the applicant or his predecessor in title. There is also a grace period of six (6) months prior to the date of filing for disclosures by reason or in consequence of any abuse of the rights of the applicant or his legal predecessor in title.

India

Does a grace period exist?: Yes

In India, there is a grace period of twelve (12) months immediately before the date of filing for disclosure of the matter constituting an invention under the following scenarios (as stated in Sections 29 to 33 of the India Patents Act):

1. Non-prejudicial disclosure by previous publication if the matter published was obtained from the applicant without his consent; and where the applicant learned of the publication before the date of the application, the application was made as soon as practicable thereafter;
2. Non-prejudicial disclosure by previous communication to Government or to any person authorised by the Government to investigate the invention or its merits, or of anything done, in consequence of such a communication, for the purpose of the investigation;
3. Non-prejudicial disclosure by public display if the display was with the consent of the inventor; or publication of any description of the invention in consequence of the display; or the use of the invention after it has been displayed or used at any such exhibition by any person without the consent of the inventor; or the description of the invention was read or published by the inventor with his consent in the transactions of a learned society;
4. Non-prejudicial disclosure by public working if the invention was publicly worked in India by the applicant or any other person with the consent of the applicant, if the working was effected for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public; and/or
5. Non-prejudicial disclosure by use and publication after provisional specification.

Pakistan

Does a grace period exist?: Yes

In Pakistan, according to Patents Ordinance 2000 (Ordinance No. LXI of 2000) III Patentability 8(3) Novelty, disclosure shall not be taken into account in determining novelty if it occurs within a grace period of twelve (12) months before the filing date due to display of the invention at an official or officially recognised international exhibition. If later on, the right of priority is invoked, then the period shall start from the date of introduction of the article into the exhibition. The controller may require proof, with such documentary evidence as considered necessary, of the identity of the article exhibited and the date of its introduction into the exhibition.

Bangladesh

Does a grace period exist?: No

Laos

Does a grace period exist?: No

Mongolia

Does a grace period exist?: No

China

Does a grace period exist?: Yes

In China, according to Article 24 of the China Patent Law, there is a grace period of six (6) months prior to the date of filing for disclosures occurred under the following scenarios:

1. It is disclosed for the first time for the purpose of public interest when a state of emergency or an extraordinary situation occurred in the country;
2. It is exhibited for the first time at an international exhibition sponsored or recognised by the Chinese Government; and/or
3. It is published for the first time at a specified academic or technological conference; and
4. Its contents are divulged by others without the consent of the applicant.

Hong Kong

Does a grace period exist?: Yes

In Hong Kong, according to Section 11A of the Hong Kong Cap. 514 Patents Ordinance, there is a grace period of six (6) months before the filing date (or filing date of the corresponding designated patent application) for disclosures due to or in consequence of:

1. an evident abuse in relation to the applicant or any proprietor of the invention for the time being; or
2. the fact that the applicant or any proprietor of the invention for the time being has displayed the invention at a prescribed exhibition or meeting.

Taiwan

Does a grace period exist?: Yes

In Taiwan, according to Article 22 of the ROC (Taiwan) Patents Act, there is a grace period of twelve (12) months before the filing date for disclosures made by Applicant or made without consent of the Applicant where the party who made the disclosure was under an obligation to keep the information confidential.

Republic of Korea

Does a grace period exist?: Yes

In Republic of Korea, according to Article 30 of the Patent Act, there is a grace period of twelve (12) months before the filing date for disclosures that occurs under the following scenarios:

1. the person having the right to obtain a patent has caused the disclosure (excluding cases wherein the disclosure is made by a national or foreign office pursuant to any treaty or Act); and/or
2. the disclosure was disclosed contrary to the intention of the person having the right to obtain a patent.

In the case of scenario (1) above, the applicant shall within 30 days from the filing date provide a document proving the relevant facts to the Commissioner of the Korean Intellectual Property Office.

Japan

Does a grace period exist?: Yes

Article 30 of the Japan Patent Act provides a grace period that a disclosure shall not be taken into consideration in determining novelty and inventive step if it occurred within one year before the filing date:

1. against the will of the person having the right to obtain a patent; or
2. as a result of an act of the person having the right to obtain a patent (excluding the case in which it has been disclosed through the publication in the bulletin pertaining to inventions, utility models, designs or trademarks).

The applicant shall submit, in the case of scenario (2) above:

1. a written statement to that effect at the time of filing; and
2. proof, within 30 days of the filing date, that the disclosure was in respect of the invention.

Australia

Does a grace period exist?: Yes

Section 24 of the Australian Patents Act (1990) and Rule 2.2 of the Patents Regulations (1991) provide a grace period during which disclosures are disregarded for the purpose of assessing novelty, inventive step or innovative step in the case of Australian innovation patents, under the following scenarios:

1. any information made publicly available, by or with the consent of the nominated person or patentee, or the predecessor in title, because the invention was:
   1. shown or used at a recognised exhibition; or published during a recognised exhibition at which the invention was shown or used;
   2. read before a learned society; or published by or on behalf of a learned society;
      
      provided the disclosure occurs within six months before the filing of a provisional or basic application (provided a complete application is filed within 12 months from filing of the provisional or basic application), or otherwise within 12 months before the filing of a complete application.
2. because the invention was worked in public, and the working of the invention was for the purposes of a reasonable trial of the invention, and because of the nature of the invention, it was reasonably necessary for the working to be in public; provided the disclosure occurs within 12 months before the filing of a provisional or basic application (provided a complete application is filed within 12 months from the filing of the provisional or basic application), or otherwise within 12 months before the filing of a complete application;
3. any information made publicly available, without the consent of the nominated person or the patentee, or their predecessor in title, by publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title, provided that a complete (non-provisional) patent application must be filed within 12 months from the day the information was made publicly available; and/or
4. at any time before the filing date, if the information disclosed was given by or with the consent of the patentee or predecessor in title, to the Commonwealth or a State or Territory, an authority thereof or person authorised thereby, to investigate the invention; and anything done for the purpose of such investigation.

New Zealand

Does a grace period exist?: Yes

According to Section 9(1) of the New Zealand Patents Act (2013), a disclosure of an invention must be disregarded as prior art if one or more of the following applies:

1. The disclosure occurred within one year period immediately preceding the filing date of the New Zealand application if obtained unlawfully or breach of confidence;
2. The disclosure occurred any time before the filing date of the New Zealand application due to communication of the matter to a government department, or to an authorised person to investigate the invention on its merits;
3. The disclosure occurred within six months period immediately preceding the filing date of the New Zealand application due to, or made in consequence of:
   1. the display of the invention with the consent of the inventor at a specified exhibition, or in consequence of such exhibition;
   2. the use of the invention with the consent of the inventor for the purposes of a specified exhibition in the place where it is held;
   3. the publication of any description of the invention in consequence of its display or use at a specified exhibition as referred to in subparagraph (1) or (2) above; or
   4. the use of the invention, after it has been displayed or used at a specified exhibition as referred to in subparagraphs (1) and (2) and during the period of the exhibition, by any person without the consent of the inventor.
   5. The disclosure was due to, or made in consequence of, the invention being publicly worked, at any time during the 1-year period immediately preceding the filing date of the patent application, by the patentee or nominated person, or person deriving title or having consent, if the working was effected for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public; and/or
   6. The disclosure occurred within one year period immediately preceding the patent date (complete specification filing date) of the New Zealand application by the patentee or nominated person, or person deriving title or having consent.

Key Takeaways

It is essential to keep the invention secret to avoid having a prior disclosure to be cited against the applicant’s own patent application. If disclosure before the filing of the priority application is unavoidable, it should be done only after an appropriate non-disclosure agreement to safeguard the applicant’s interests. Reliance on the grace period should only be a last resort in view that the differences between the operations of grace periods in the various jurisdictions remain, and that grace period provisions are not present in some countries. To find out whether a grace period can be used in a particular country for a particular disclosure, please contact Patent Attorney Dr. Vivian Wei Cheng of JurisAsia LLC, Tier 1 Singapore law firm, who has in-depth understanding of and are highly familiar with the local IP laws in the region.

• Category: Insight, Intellectual property law, Patents