Patent Grace Period Laws in the IP5 Patent Offices: Some Similarities But Largely Different

Life science and other high technology companies most frequently file patent applications in five IP offices (IP5), namely: the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office (China) (SIPO). Several factors, including consumer purchasing power and more advanced healthcare systems, make these countries/regions attractive for procurement and enforcement of IP. However, among the IP5 there is significant variation between the patent laws of each, including the grace period protections each provides. We summarize below the grace period nuances for each of the IP5.

The America Invents Act (AIA) altered the US grace period provisions to account for two types of public disclosures: (1) disclosures made directly by an inventor or applicant; or (2) disclosures made by another who obtained the information directly or indirectly from the inventor or applicant.[1] As long as a patent application is filed within one year of the public disclosure and one of these exceptions applies, the public disclosure is excluded as prior art. Thus, the public disclosure cannot be used in a novelty or an obviousness determination although the disclosure antedates the application filing.

Like the United States, South Korea has a one year grace period that prevents a disclosure from being used in a novelty or inventive step determination. However, South Korea’s exclusion of public disclosures is limited to (1) applicant-derived disclosures, except for information disclosed in Korean or foreign patent publications, or (2) disclosures that occur “against the intention” of the person having the right to obtain the patent.[2] Thus, inventor- or applicant-derived disclosures does not include patent publication disclosures, unless the disclosure is made “against the intention” of the inventor or applicant.

The EPO, Japan, and China all have a six month grace period, but the similarity largely ends there. Each of these grace periods differ on the grace period exclusion type, i.e., whether the disclosure is excluded for novelty and inventive step determinations or just novelty determinations, as well as the circumstances of the disclosure.

The EPO’s limited six month grace period only excludes public disclosure from novelty determinations[3] and requires that there must have been “an evident abuse in relation to the applicant or his legal predecessor” or the applicant or legal predecessor displayed the invention at an officially recognized exhibition.[4] China is similar to the EPO in that the six month grace period only prevents the public disclosure from novelty determinations. But in China, the public disclosure must meet one of three circumstances to qualify for the grace period: (1) the invention was exhibited at an internationally-recognized exhibition; (2) the invention was published for the first time at a technological conference; or (3) the invention was divulged by others without the consent of the applicant.[5]

In the EPO and China, it is important to note that inventor- or applicant-derived public disclosures are not protected unless the disclosure meets the recognized exhibitions provisions. For the EPO, the number of recognized exhibitions that qualify are few in number, as 2016 only includes two specific exhibitions and 2017 currently includes three.[6] For China, identifying which internationally-recognized exhibitions qualify requires additional investigation because its Examination Guidelines state, “exhibitions organized by the Chinese government [and] exhibitions recognized by the Chinese government include those held in foreign countries but recognized by the State Council or its departments.”[7] Although at first glance the recognized exhibitions may appear to provide a broad exception, upon further review the exception is narrow.

Japan’s six month grace period provisions will prevent a public disclosure from being used in novelty and inventive step determinations but must meet certain conditions to apply. Specifically, the public disclosure must have been (1) a public test of the invention, (2) a presentation in a printed publication, (3) an oral presentation, (4) against the will of the inventor or applicant, or (5) at an international or national exhibition.[8]

Each of the IP5’s grace period laws prevent some form of public disclosure from use in at least a novelty determination. However, the specific circumstances for how the public disclosure may qualify for the country/region’s grace period varies for each member of the IP5. For additional information on the IP5 and other countries’ grace periods, the world map and table included with this issue provide a quick-reference. However, we recommend contacting local counsel to ensure proper steps are taken to avail yourself of a specific country’s grace period.

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