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

by Sterne, Kessler, Goldstein & Fox P.L.L.C.
Contact

Sterne, Kessler, Goldstein & Fox P.L.L.C.

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  (see related newsletter for map and table). However, we recommend contacting local counsel to ensure proper steps are taken to avail yourself of a specific country’s grace period.


[1] AIA 35 U.S.C. §§ 102(b)(1)(A) (2012).

[2] Article 30(1) of the Patent Act (S. Kor.).

[3] European Patent Convention art. 55, Oct. 5, 1973, 1065 U.N.T.S. 199.

[4] Id.

[5] Article 24 of Patent Law of the People's Republic of China (2008).

[6] Supplementary Publication 4/2016 – Official Journal EPO, European Patent Organization, https://www.epo.org/law-practice/legal-texts/official-journal/2016/etc/se4/p219.html (last visited May 10, 2017).

[7] Chinese Guidelines for Examination, Part I, Chapter 1, 6.3.1, State Intellectual Property Office  (May 24, 2006),  http://www.sipo.gov.cn/zhfwpt/zlsqzn/guidelines2006(EN).pdf.

[8] Article 30 of the Patent Act (Japan).

 

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.

© Sterne, Kessler, Goldstein & Fox P.L.L.C. | Attorney Advertising

Written by:

Sterne, Kessler, Goldstein & Fox P.L.L.C.
Contact
more
less

Sterne, Kessler, Goldstein & Fox P.L.L.C. on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.