P symbolMany inventors are not aware that it is supremely easy for a U.S. inventor to lose foreign patent rights even if the inventor’s U.S. patent rights are preserved.  How does that happen?  By publicly disclosing the invention prior to the filing a patent application in the U.S. or elsewhere.

The laws of the U.S. are different from other countries relating to patent rights.  In the U.S., the inventor can put the invention on sale, publish a description of the invention and use the invention publicly for up to one year before filing a patent application.  The one-year period is known as the ‘grace period.’  If the inventor files a patent application within the grace period, the inventor’s U.S. patent rights are preserved.  If the inventor misses the grace period and fails to file the patent application within one year, then the inventor’s right to a U.S. patent evaporates and is gone forever.

In most of the rest of the world, there is NO grace period.  ANY public disclosure of the invention prior to the filing of a patent application IMMEDIATELY terminates all patent rights, even if the public disclosure is made in the U.S.  The loss of patent rights is instantaneous and absolute.  Once lost, the foreign patent rights cannot be reclaimed. This instantaneous loss of foreign patent rights on public disclosure of the invention is known as the ‘absolute novelty’ requirement.  We cannot overestimate the importance of the ‘absolute novelty’ requirement for inventors who wish to protect their inventions outside the U.S.

There are some 200 countries around the world that issue patents, and the laws of those countries are not identical.  Of the industrialized countries of the world, only the U.S., Japan, Canada, Russia and Korea allow a grace period of any kind between public disclosure and filing a patent application.  The grace period in Japan, Russia and Korea is six months and in Canada it is 12 months.  In each of those countries other than the U.S., the grace period applies only where the disclosure is made by the owner of the invention or by someone who obtained the information from the owner.

Some ‘absolute novelty’ requirements are not as absolute as others.  Under the European Patent Convention Article 55, which provides legal authority for the European Patent Office, a grace period of six months applies if a public disclosure is made by someone in breach of a duty of confidentiality or if the public disclosure was a display at an international exhibition.

What kinds of disclosures will qualify as a public disclosure to trigger the absolute novelty bar?   In general, any disclosure that teaches someone how to make and use the invention is a ‘public disclosure’ that will kill foreign patent rights.  The disclosure could be in the form of a sale, in the form of a verbal description, in the form of a printed publication, or in the form of use of the invention in public.

So what kind of patent applications will serve to beat the absolute novelty bar?  Any of the following will work nicely: a U.S. provisional application, a U.S. utility patent application, a PCT international application, and a patent application filed in any foreign country that is a signatory to the major patent treaties.

THE BOTTOM LINE:  If you believe that there is any chance that you will want to obtain international patent protection for your invention, make sure that you file a patent application of some kind BEFORE you make any public disclosure.  You’ll be glad that you did.

— Robert J. Yarbrough, Esq.