NAIP Patent Blog

A novelty grace period is the allowable time from the disclosure date of the invention to the filing date. It's a special rule that, under a certain conditions, prevents the disclosure of an invention prior to the application to be recognized as prior art during examination. Many people assume the grace period is for the benefit of the inventor, allowing him to disclose his/her invention before filing an application. However, reality is opposite, because of the high risk of losing "novelty" in most or even all the patent offices if something unexpected happens during the period of the disclosure to application. Therefore, to help fully explain the details, here we will explain the grace period rules in TIPO and the risks that an applicant faces.

In the Taiwan Patent Act, Article 22, paragraph 2 deals with grace periods, and states:

an invention may not be patentable if it has been published, put to public use, or known to the public before applying for patent, unless it is filed within 6 months from the date of occurrence of the following causes:

1. Where the invention is disclosed as a result of research or experiment;
2. Where the invention has been exhibited at an exhibition sponsored or approved by the government; or
3. Where the invention has been disclosed in an occasion not intended by the patent applicant.

Of the three causes, subparagraphs 2 and 3 are well-defined (though proving accidental disclosure is another matter), so here we focus on the first condition, paragraph 1.

TIPO's patent examination guidelines goes into further detail about this condition:

If the content of the invention sought to be patented has been published, put to public use, or known to the public prior because of the purpose of research or experiment, for example, the publication of a thesis, the novelty of the invention is kept if the patent is filed within 6 months from the date of occurrence, which is the date that the content of the invention is available in public, not necessarily read or known."

From the example provided in the examination guidelines, we have a rough idea that something like thesis disclosures satisfies the condition set under Article 22, paragraph 2, subparagraph 1.

Most recently on 11 December 2009, a draft amendment of the Patent Act passed to the Legislative Yuan for examination, and may take effect in the near future. In Article 22, "research" was removed from the "disclosed as a result of research or experiment" (subparagraph 1) and a second paragraph, "disclosed via printed publication", was added. According to the explanation from TIPO, "research" is something incomplete and requiring further discussion or study. An incomplete invention is not a subject matter of a patent. Therefore, "research" should not be included in consideration. The phrase "disclosure via printed publication", provides a wider range of the conditions acceptable for grace period status.

In the previous paragraphs we defined grace period and described the acceptable conditions under TIPO's Patent Act. However, one important fact must be mentioned: unlike in the United States, a grace period does NOT determine the priority date of the patent. Although TIPO accepts the patent applications that disclosed prior to filing and meet conditions set in Article 22, paragraph 2, there are 3 major problems/risks caused by this process:

(1) If the applicant claims the benefit of a grace period under Article 22, paragraph 2, subparagraph 1, the invention may lose patentability in some patent offices. For example, China's State Intellectual Property Office (SIPO) allows the grace period only if the disclosure is in a national or an officially-recognized international exhibition, or in a national-level scientific seminar. In the Japan Patent Office (JPO), although a similar grace period clause exists, the recognition of "disclosed as a result of experiment" is different from TIPO. So the risk of losing patentability in other countries/regions is a major concern.

(2) If the applicant claims the benefit of grace period under Article 22, paragraph 2, subparagraph 2, the "exhibition" in which the invention was disclosed plays a key factor in its patentability. Unfortunately, currently no set definition of "officially recognized international exhibitions" exists. But for example, at the EPO, only the World Expo has been listed as a qualified event for 2010. Therefore, while you can still file a Taiwan patent after an invention exhibited in CeBIT or COMPUTEX, it has already lost its "novelty" for a European patent at the moment of exhibition.

(3) There is still a risk of non-patentability even if the invention is disclosed under the qualified conditions of Article 22, paragraph 2, subparagraphs 1 and 2. If another inventor files a patent or discloses his own invention (with subject matter which can be used as prior art against your invention), during the time between your disclosure and your application, that creates a "lose-lose" situation. The other inventor cannot receive a patent because your disclosure has made his invention "non-novel". Also under the "first to file" system, his application or disclosure also invalidated your application because the grace period only allows a prior art exception of your own disclosure. No one is able to receive a patent in this situation—unless you or he can prove that the other achieved the invention by through illegal means.

Let's take an example to explain the problem an applicant may have, if he/she does not completely understand the differences between grace period and priority. Assume that Jenny is the inventor of a special controller for the PlayStation 3. She disclosed the controller and how it works at the E3 game show, on 16 June, 2008. She filed her invention on 1 February 2009--within the 1-year grace period offered by the USPTO. On 16 February 2009, Jenny decides to authorize her good friend Huang to produce this controller in Taiwan, so she requests a patent firm to file a Taiwan patent and claim the priority from the US patent. Do you see the problem here? Although the first filing date of the invention was only half a month before her decision to file a Taiwan patent (which satisfies the regulation for the international priority claiming) 7 months have passed since disclosure of the invention to the date of decision to file a Taiwan patent. The application has no chance to meet the requirements for the grace period in Taiwan. In this case, the controller may not be patentable in all patent offices except the USPTO.

To summarize, a novelty grace period is a remedial measure for filing a patent if you have already disclosed your invention. But is an option nonetheless. However, please don't assume that this rule erases any and all disclosure, because in many countries the invention may still lose novelty. The best way to secure the novelty of your invention is still to first file the patent. Then you can claim priority of the first filing date of when applying in other countries. Just ask yourself before disclosing an invention: "Is it worth the risk of losing this patent?" I believe you will know what to do next.

"In disapproving an exclusive machine-or-transformation test, this Court by no means desires to preclude the Federal Circuit's development of other limiting criteria that further the Patent Act's purposes and are not inconsistent with its text.”