The short answer is ‘yes’ – but, it depends on:
- How long ago you publicly disclosed your invention; and
- The countries in which you seek rights.
Patents are only granted for new inventions and a prior disclosure means the disclosed invention is no longer new. However, most countries have “grace” provisions in their laws, so that you will be forgiven for making a public disclosure of your invention before filing a patent application. The deadline to file a patent application under the grace provisions varies from country to country.
The grace provisions for Australia, the US, China (and Hong Kong), New Zealand, Europe (and the UK) and Canada are set out below.
Australia
1. Disclosure not to be taken into consideration in determining novelty and inventive step if it occurred:
- within six months before the filing of a provisional or basic application provided a complete application is filed within 12 months from filing of the provisional or basic application; or otherwise within 12 months before the filing of a complete application
- by showing, use or publication of the invention at a recognized exhibition;
- in a paper written by the inventor and read before, or published with the inventor’s consent by or on behalf of, a learned society.
- within 12 months before the filing of a provisional or basic application provided a complete application is filed within 12 months from the filing of the provisional or basic application; or otherwise within 12 months before the filing of a complete application by working the invention in public for the purposes of reasonable trial due to the nature of the invention;
- within 12 months before the filing of a complete application in Australia with the consent of the nominated person, patentee or predecessor in title or without consent and the information disclosed was derived from the patentee or predecessor in title;
- at any time before the filing date, if the information disclosed was given by or with the consent of the patentee or predecessor in title, to the Commonwealth or a State or Territory, an authority thereof or person authorized thereby, to investigate the invention; and anything done for the purpose of such investigation.
2. In the cases of 1.a.(i), the applicant shall:
- when filing the application, state that the invention has been disclosed at the exhibition;
- before the publication of the application, file a statement issued by the exhibition authority.
United States of America
Disclosure not to be taken into consideration in determining novelty and inventive step if it occurred within one year before the filing date in the form of:
- Inventions patented or described in a printed publication in the US or abroad;
- Public use or on sale in the US.
China
Disclosure not to be taken into account in determining novelty if it occurred within six months before the filing date by:
- Display of the invention at an international exhibition sponsored or recognized by the Chinese Government;
- Making the invention public at a prescribed academic or technological meeting;
- Any person without the consent of the applicant.
Hong Kong
Disclosure of the invention not to be taken into consideration if it occurred no earlier than 6 months before the filing date due to:
- An evident abuse in relation to the applicant or any proprietor of the invention for the time being; or
- The fact that the applicant or any proprietor of the invention for the time being has displayed the invention at a prescribed exhibition or meeting.
New Zealand
An invention shall not be deemed to have been anticipated by:
1. Disclosure at any time before the filing date (priority date) of matter obtained by the applicant or his predecessor in title and published without his consent provided that;
- where the applicant or his predecessor in title learned of the publication beforehand, the application or application in a convention country was filed as soon as reasonably practicable thereafter; and
- the invention was not commercially worked in New Zealand before the filing date (priority date) by, or with the consent of, the applicant or his predecessor in title (other than for the purpose of reasonable trial).
2. Disclosure at any time before the filing date (priority date):
- in any other application for a patent in respect of the same invention, contravening the rights of the applicant or his predecessor in title;
- by use or publication of the invention without the consent of the applicant or his predecessor in title in consequence of any disclosure of the invention by the applicant for the other application;
- by the communication of the invention to a Government Department or person authorized thereby to investigate the invention, or of anything done for that investigation.
3. Disclosure within six months before the filing date (priority date) (calculated from the opening of the exhibition or the reading or publication of the paper) by:
- display or use of the invention with the consent of the inventor at a declared international or industrial exhibition;
- publication of the invention in consequence of the display or use of the invention at such exhibition;
- use of the invention during the period of the exhibition without the consent of the true and first inventor;
- in a paper read by the inventor before a learned society or published with his consent in the transactions of such a society.
4. Disclosure within one year before the filing date (priority date) by public working of the invention by, or with the consent of, the applicant or his predecessor in title for the purpose of reasonable trial.
European Patent Organisation (EPO)
Disclosure not to be taken into consideration in determining the state of the art if it occurred no earlier than six months preceding the filing date due to, or in consequence of:
- an evident abuse in relation to the applicant or his legal predecessor; or
- display of the invention by the applicant or his legal predecessor at an official or officially recognized international exhibition.
United Kingdom
1. Disclosure not to be taken into account in determining novelty if it occurred within six months before the filing date due to:
- matter directly or indirectly obtained unlawfully or in breach of confidence from the inventor;
- display of the invention by the inventor at an international exhibition.
2. The applicant shall state, when filing the application, that the invention was displayed, and furnish written evidence within a prescribed time limit.
Canada
Disclosure not to be taken into consideration in determining novelty and inventive step if it occurred within one year before the filing date by the applicant, or by a person who obtained knowledge from the applicant.