The word “grace” gets thrown around a lot in ordinary conversation. “Grace” has many meanings and connotations ranging from being a woman’s given name, designating an attribute like elegance in motion, or even as a verb such as when someone is favored (i.e., “graced”) by another’s presence. In addition, it is oft en used, in various ways in the Christian church, in a theological context.
In patent law, the word grace pops up in the context of the phrase “grace period.” A grace period in patent law is not a catechismal attribute, although it does relate to a period of time that may “save” an applicant’s patent rights. The phrase grace period is only explicitly mentioned in our U.S. patent statutes in connection with the late payment of patent maintenance fees for issued patents. However, it is oft en used by patent attorneys as a term of art to describe a time interval at the front end of the patent application process. In both cases it identifies a period of time which “saves” the patent applicant or owner from losing her/his patent rights (although not in a divine sense).
An underlying precept in patent law is that a patent must be granted for something novel (new). Simply put, your client’s invention is novel if it was not known to the world before your client invented it. This is understandable with respect to parties other than your client. If someone else has publicly disclosed the invention before your client invented it, then your client should not be entitled to a patent since the invention is not novel. However, in the U.S. this rule of novelty is a little bit more complicated. There is an incentive in virtually every country in the world to file a patent application as soon as possible. If your client discloses the invention to the public before filing, the patent laws of most countries would define that disclosure as an event that destroys novelty for the disclosed invention (treating that disclosure the same as if that public disclosure of the invention was made by another party). This prior disclosure is known by another term: “prior art.”
Accordingly, your client’s own actions before filing a patent application can prevent the obtaining of a valid patent. In most other countries, a patent application has to be filed before your client’s public disclosure of the invention or else the client’s public disclosure is considered to be “prior art” to your client’s invention (and patent application) just as any other third party’s prior public actions would related to that invention. This seems somewhat unfair, especially for clients who do not understand patent law. If your client creates a widget and then proudly displays that widget on his/her front lawn or website, there is a loss of patent rights in most countries.
THE U.S. GRACE PERIOD
Here is where the grace period comes into play. In those countries that do offer a “grace period’” if a patent application is filed by the inventor within a certain time interval after publicizing that invention, that publicizing event is not considered to be “prior art” to that patent application. In the U.S., there is a one-year grace period. If your client inventor displays the inventive widget on the front lawn, your client then has one year to file a patent application. If the application is not filed within one year, your client’s own public disclosure becomes prior art to your client.
This apparently permissible filing delay may be contrary to what you have heard about the need to file a patent application prior to any public disclosure. Filing prior to any public disclosure is a good rule to follow regardless of the grace period in the U.S. for at least two reasons: (1) the U.S. is a first-to-file country (patent rights go to the first party to file), and (2) many countries do not have a grace period, so a public disclosure prior to filing destroys novelty for those countries (remember: no novelty = no patent). If your client filed in the U.S. prior to the public disclosure, that U.S. filing date can be used to establish a filing priority date for a patent application filing in most countries under a treaty called the Paris Convention.
GRACE PERIODS ELSEWHERE
But what if there is a public disclosure prior to the U.S. filing date? Is all lost when it comes to foreign countries? Not quite. Some countries have adopted the concept of a pre-filing grace period, including Australia, Brazil, Canada, Japan, Mexico, and South Korea. Thus, your client can invoke a one-year grace period in such countries if a disclosure occurs within one year prior to making an effective patent application filing.
Patent filing grace periods. A novel concept: a bit of forgiveness built into the law. Peter Sawicki Mr. James L. Young