Have I shot myself in the foot by prior publishing my invention?


shot in the footThe public disclosure of an invention prior to filing a related patent application was traditionally fatal to the possibility of obtaining a valid patent.

In more recent times, inventors who have published their invention may still be able to obtain a patent for that invention in many countries, including Australia, by using novelty “grace period” provisions. However, the number of countries recognizing a novelty grace period is relatively limited, and the rights afforded by the granted patent are subject to conditions as explained below.

In Australia, any information relating to an invention and made publicly available, must be disregarded if a patent application is made within the “grace period” of one year from the date of making the information publicly available[i]. However, any party that takes advantage of the publicly available information and either starts using, or takes definite steps to start using, the invention before the patent application is filed, is exempt from infringement of a patent which may issue in relation to the patent application[ii]. Any other parties exploiting the invention would not be protected by this exemption and could therefore be stopped from infringing the patent. Therefore, the granted patent would at least minimise the parties that could copy the invention without consequence, which is still a valuable right.

In reality, some inventors only realize the true potential of their invention once it has become publicly known. In the case of a successful invention, obtaining patent protection relying upon the “grace period” is most certainly better than having no patent protection at all.

Whilst not ideal, prior publication amounts to a shooting in the pinky toe, rather than the whole foot. However, patent treatment should be immediately sought, before festering takes hold which can result in the death of any ensuing patent.

[i] Section 24 of The Patents Act 1990

[ii] Section 119 of The Patents Act 1990

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