We have gathered together information from a multitude of sources and have used this to compile what we believe to be the ultimate guide to grace periods for patents, designs and utility models
What is a Grace Period?
In most countries, when obtaining protection for a valid patent, utility model, or design, the subject matter must have novelty over the relative prior art, which refers to any materials that were publicly available before the filing date. In general, this is an ‘absolute novelty’ requirement. However, some countries operate a 'grace period' in relation to the novelty requirement. The grace period is whereby publication of the invention or design for a limited period before filing the application for a patent, utility model or registered design does not invalidate the resulting rights. Usually, such publications are limited to:
- Publication by the inventor/designer or with their authorisation; and
- Publication of the invention or design made in breach of confidence
What’s the Difference Between a Patent, Utility Model and Registered Design?
Patents grant rights over a new technical solution that addresses a specific technical problem, provided such a solution demonstrates an inventive concept. The scope of protection is determined by the wording of the claims of the patent. Typically, patents have a maximum duration of 20 years from filing. Requirements for obtaining patents are that the invention has (1) novelty, meaning it cannot have been disclosed anywhere in the world before the earliest effective filing date, known as the priority date (including publications, public use, or sales), (2) involves an inventive step, meaning it is not obvious to a person skilled in the relevant technical field, and (3) must be capable of being made or used in some kind of industry. Most countries have a patent system.
Utility Models (also known as short term, or petty patents) protect the technical solutions in much the same way as an invention. In all respects a utility model is very similar to a patent, except the term is usually shorter, typically 10 years from filing. The requirements are either ‘novelty only’, or ‘novelty and inventive merit’ or ‘inventive character’, depending on the country. Typically, utility models are easier to obtain than patents because there is either no requirement to show a full inventive step, or the requirement to show inventive merit is much lower than that required for a full patent. Utility model rights are not uniformly recognised worldwide; many countries do not have a utility model system.
Registered Designs generally protect the appearance of a product (its aesthetic aspects) rather than technical functionality. The period for registered designs varies from state to state, with a maximum term typically being between 10 or 25 years from filing, depending on the territory. There is generally a novelty only requirement for registration. Protection is by line drawing or photographic representations. In the UK, the registration of a design gives the registered proprietor the exclusive right to use the design and any design which does not produce on
the informed user a different overall impression. In determining whether a design produces a different overall impression on the informed user, the degree of freedom of the author in creating his design shall be taken into consideration (ref Section 7 of the United Kingdom’s Registered Designs Act 1949). Other countries have different local novelty requirements.
While they offer a vital second chance, grace periods are far from universal, varying significantly between patents, designs, and utility models, and across different international jurisdictions. To help navigate these differences, in the following pages we have put together a handy look-up table listed by jurisdiction. We have made best endeavours to ensure that the grace periods listed are correct at the time of writing. Grace periods may have changed since this article was created. Please consult us for up-to-date information on any particular country.
Public Disclosure
A public disclosure can be made either:
• By the inventor / designer or with the inventor’s or designers or right holder’s permission; or
• In breach of confidence
• At an exhibition or in a research paper.
The grace periods shown in the table included in the full article download (see below) relate to general public disclosures with the inventor’s, designer’s or right holder’s permission. If a public disclosure is made in breach of an obligation of confidentiality, then some states also allow for valid patent or design rights to be filed by the person entitled to the right, for a short period after public disclosure. These periods are not shown.
If you have situation where a public disclosure has been made in breach of an obligation of confidence, please contact us for specific advice. Similarly, where the disclosure was made at a conference, in a research paper, by a patent application of the applicant, or at a qualifying exhibition. In some cases, these types of public disclosures are especially exempted, and specific advice needs to be sought in each country of interest.
The presentation of a research paper at an exhibition or conference would be classed as public disclosure
Extension of Existing UK Patents Abroad
In many territories - mostly British Overseas Territories, Crown Dependencies, and some Commonwealth nations - you can extend or "re-register" your UK Intellectual Property (IP) rights. This is often faster and cheaper than filing a brand-new application because it relies on the work already done by the UK Intellectual Property Office (UKIPO).
These rights are categorized by Automatic Extension (no action needed) and Re-registration (action and fees required).
Countries where Granted UK patents can be extended are listed in the supplementary table in the full article download. This means that each of these countries accepts UK patents as being protected in that country after completing local formalities.
Changing Laws and the Need to Obtain Local Advice
The above grace periods are believed to be correct at the time of writing However, local laws change on an ongoing basis, therefore the information provided is not to be relied on as definitive legal advice and always needs to be checked with a qualified patent attorney in each country of interest.
