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Never disclose without protection
Chris Baxter
Chris Baxter

The golden rule is never disclose without protection. Many inventors are often surprised that any disclosure of an invention, even by themselves, can invalidate a subsequently filed patent application.

However, in certain circumstances, it may be possible to rely on the grace period provisions in Australia.

In a nutshell, the grace period provisions in Australia provide a safety net giving the discloser 12 months in which to file a nonprovisional application wherein, if done so, the disclosers own disclosure would not be considered as prior art for the non-provisional application.

There are a couple of caveats however.

Firstly, the Grace period provisions in Australia give the inventor 12 months in which to file a complete application. In other words, the inventor cannot file a provisional application and then file a complete application 12 months later. Rather, the inventor must file a complete application within the 12 month period. If the inventor is looking for international protection, the complete application would take the form of a PCT patent application. Alternatively if the inventor was interested in Australia only, the complete application could take the form of an Australian standard complete patent application.

In certain other jurisdictions, such as the US, the grace period provisions allow an inventor 12 months in which to file a provisional patent application. However, if the inventor did so, and then subsequently filed an Australian complete application, the Australian complete application would be invalid. As such, the inventor would have had to file the Australian complete application simultaneously.

Furthermore, if the grace period is to be relied upon, rather than waiting the full 12 month allowance, inventors are encouraged to file as soon as is practical. The reason is that delaying the filing of the complete application delays the filing date of the registered intellectual property right, leaving the inventor exposed to third parties subsequently exploiting the invention prior to the subsequent filing date, the third party being afforded the prior user exemption to infringement.

Yet further, previously, in Australia, “secret use” was not protected by the grace period provisions meaning that if the inventor had used the invention secretly, without publication, the inventor would not be able to utilise a Grace period provisions. Thankfully, the effects of the Raising the Bar Act of 2012 which came into effect on 15 April 2013 now extend the grace period provisions to secret use, wherein section 9 of the Patents Act was amended to exclude from the definition of secret use any use of the invention by or on behalf of, or with the authority of, the patentee or nominated person, or his or her predecessor in title to the invention, for any purpose, if a complete application is made for the invention within the prescribed period.

If you find yourself in a situation of having disclosed your invention without first having established a filing date, please contact us right away so that we can guide you as to the most appropriate options to preserve your intellectual property rights.

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About the author
Chris Baxter
Managing Director, Patent & Trade Mark Attorney
Chris Baxter is a Sydney patent and trade mark attorney specialising in software patents, computer patents, medical device patents and engineering patents.

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