The Effect of Public Disclosures on Patent Filings

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In general, a patent application for an invention should be filed at the patent office before the invention is disclosed to the public.  Otherwise the public disclosure is considered “prior art” to the patent application and will be taken into account by the patent office examiner when considering whether the claimed invention meets the novelty and non-obviousness requirements of patentability.  In most countries, the patent office will refuse to grant the corresponding patent based on lack of novelty or obviousness if the claimed invention was disclosed to the public prior the filing date of the patent.

Some select countries operate “grace periods” that permit a patent applicant to file a patent application within a certain window of time after publicly disclosing their invention.  If the patent application is filed within the time window, the earlier disclosure is not considered prior art to the patent application.

Below is a non-exhaustive list of countries that permit a 12-month grace period, assuming the disclosure is made under the circumstances defined under each country’s specific patent laws:

  • Algeria
  • Argentina
  • Australia
  • Brazil
  • Canada
  • Chile
  • Colombia
  • Costa Rica
  • Japan*
  • Mexico
  • South Korea
  • Turkey
  • United States

* applies to disclosures made on or after December 9, 2017

Below is a non-exhaustive list of countries that permit a 6-month grace period, given the disclosure is made under certain circumstances:

  • Albania
  • Austria
  • Belgium
  • China
  • Germany
  • Russia

Because grace period provisions differ from country to country, a careful assessment of the details of the disclosure must be made in each case and after consulting with legal counsel to determine whether or not the grace period applies.  The United States and select other countries (including Canada) are unique in that their 12-month grace period broadly applies to any disclosures of the invention made by the inventor himself or any third party.   Most countries that offer grace periods define very specific circumstances in which the grace period is triggered.  In China and Germany, for example, the 6-month grace period applies in the specific circumstances where the public disclosure is a display of the invention at an officially recognized exhibition.

 

For more information regarding the countries that permit grace period filings and a summary of the circumstances under which the grace periods apply, please review the October 2019 WIPO report available here: 2019.10 WIPO Grace Period Summary

On-Sale Bar Applies to Secret Sales

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In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.,[1]the Supreme Court recently clarified that the on-sale bar to patentability under 35 U.S.C. §102 can apply to secret sales.  Under the Leahy–Smith America Invents Act (AIA), §102(a)(1) bars patentability if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”  Helsinn contended that the AIA changed the on-sale bar provision of §102 with the addition of the phrase “otherwise available to the public” thereby limiting the preceding terms, including the on-sale provision, to disclosures that make the claimed invention available to the public.[2]  Helsinn argued unsuccessfully that its AIA patent is not invalidated by a sale made more than one year before filing that included a confidentiality agreement regarding proprietary information.[3]

The Supreme Court held “that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under §102(a).”[4]  In rejecting Helsinn’s arguments, the Supreme Court stated that their precedents suggest a sale or offer of sale does not require the invention to be publicly available to constitute a bar to patentability.[5]  Further, the Supreme Court stated, “[t]he Federal Circuit—which has ‘exclusive jurisdiction’ over patent appeals, 28 U. S. C. §1295(a)—has made explicit what was implicit in our precedents.  It has long held that ’secret sales’ can invalidate a patent.”[6]  Due to the settled pre-AIA precedent, there is a presumption that Congress adopted the earlier judicial construction of the phrase “on sale” by reenacting the same language in the AIA.[7]  The Supreme Court also stated that the “addition of ‘or otherwise available to the public’ is simply not enough of a change for us to conclude that Congress intended to alter the meaning of the reenacted term ‘on sale.’”[8]

[1]Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., et al., 586 U.S. ___ (2019) (slip op.), https://www.supremecourt.gov/opinions/18pdf/17-1229_2co3.pdf

[2]Id. at p. 8.

[3]Id. at p. 2.  See 35 U.S.C. §102(b)(1) (exceptions for certain disclosures made one year or less before the effective filing date).

[4]Id. at p. 9.

[5]Id. at p. 6.

[6]Id. at p. 7.

[7]Id.

[8]Id. at p. 8.