Patent Grace Periods In South East Asia

more+
less-
more+
less-
Explore:  Grace Period Patents

As South East Asia becomes an increasingly popular patent filing destination, we explore the region’s grace period provisions and their limitations.

Grace period

An innovation is generally not patentable if it has been publicly disclosed before patent protection is applied for. Commercial interests however often compete with non-disclosure. For example, showcasing prototypes in trade exhibitions early for market feedback may be important from a product development perspective. Sometimes experimentation for research and development purposes may be an unavoidable part of product development.

Some countries offer a “grace period” which, with conditions, guards patentability against self disclosure by inventors or patent applicants, and sometimes unauthorised disclosure by a third party, provided that patent protection is applied for before the grace period expires. While grace periods can sometimes be useful in avoiding prior art, it should not be routinely relied upon for late-filing for patent protection because of various limitations.

South East Asia

Below we consider the grace period provisions of six selected South East Asian countries: Indonesia, Malaysia, Philippines, Thailand, Vietnam and Singapore. A table comparing their grace periods is set out below.

 

 

Indonesia

Malaysia

Philippines

Thailand

Vietnam

Singapore

Grace period duration

6 months (self disclosure)

 

12 months (unauthorised disclosure)

12 months

12 months

12 months

6 months

12 months

Applicable to self disclosure

Yes

Yes

Yes

Yes

Yes

Yes

Applicable to unauthorised disclosure

Yes

Yes

Yes

Yes

Yes

Yes

Example of limitations

Limited circumstances of self disclosure

Limited circumstances of unauthorised disclosure

Novelty only

Novelty only

Limited circumstances of self disclosure

Limited circumstances of self disclosure

Similarities and differences

In all six countries considered, grace period provisions exist and are generally applicable to both self and unauthorised disclosure. The grace period is generally 12 months, with the exception of only a 6 month grace period in Vietnam and for self disclosure in Indonesia.

Grace period provisions however often come with limitations. Further, different countries impose different limitations. For examples:

  • In Philippines and Thailand, grace period provisions apply to novelty consideration only.
  • In Indonesia, Vietnam and Singapore, self disclosure guarded by grace period provisions is limited to certain circumstances, such as use of invention for research and development purposes, or display of invention official or officially recognized international exhibition, or disclosure before and published by a learned society.
  • In Malaysia, unauthorised disclosure guarded by grace period provisions is limited to where there is an abuse of the patent applicant’s rights.

Note that the above examples are non-exhaustive and there are often additional limitations. It is therefore important to seek a patent attorney’s advice if grace period provisions are to be relied upon.

As mentioned, even with the existence of grace period provisions, patent applicants are generally advised against delaying patent lodgement. First, grace period provisions often only guard against disclosure derived from the inventors (be it self or unauthorised disclosure). Independently developed innovations will still be prior art. Second, law on grace periods may change over time. It may be difficult or time consuming to keep track of changes in law in all your markets. Third, some jurisdictions (e.g. Europe) simply do not have grace period provisions. Disclosing before lodgement may therefore geographically limit your patent protection.

Topics:  Grace Period, Patents

Published In: Administrative Agency Updates, Intellectual Property Updates, International Trade Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Freehills Patent Attorneys | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »