Many patent owners are interested in trying to draft a single patent application that will serve them in several countries. This is ambitious, since there are many differences between various countries' patent systems, but perhaps not impossible. The patent drafter just needs to be aware of and try to balance all the different requirements in the single patent application. This series of articles will outline some important considerations when drafting a single patent application.
In this first article, we will review the grace period provisions in the
In the
- Under 35 U.S.C. § 102(b)(1)(A), it applies when the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly front the inventor or a joint inventor.
- Under 35 U.S.C. § 102(b)(1)(B), it applies when the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
Thus, according to AIA § 102(b)(1)(B), if an inventor publicly discloses his or her invention prior to filing, the inventor's disclosure “antedates” a third party's disclosure of the invention made in the interim.
The application of this provision, however, may be limited to the “same invention” (and may not encompass obvious variants) although the
In
- When the disclosure was made by a person with a right to the disclosed invention, the applicant should claim a publication exception with evidence, such as the disclosed document, to the Korean Patent Office within 30 days from the filing date (see section 30(2) of Korean Patent Law); or
- When the disclosure was made not in accordance with the intent of the person having a right to the invention, for example disclosed by a third party, a grace period may be claimed during the response period to office actions or for three months after the receipt of the notice of allowance (see section 30(3) of Korean Patent Law).
In
- The invention was exhibited for the first time by the Applicant at an international exhibition sponsored or recognized by the Chinese government;
- The invention was made public for the first time by the Applicant at a prescribed academic or technology-related convention; and
- The invention was divulged by a third party without the consent of the Applicant.
The third party who divulged the invention shall have access to the invention before the filing date. On the other hand, if a person independently made the same invention and filed a patent application prior to the above-mentioned filing date, this independently-filed patent application will be considered as prior art, even it is filed within the six months before the above-mentioned filing date.
EPO
The EPO “grace period” is even more limited. While the EPO does allow inventions to be exhibited at certain recognized exhibitions (similar to points 1 and 2 in
Summary
For all practical purposes, the EPO and
Since waiting for clinical trial data is therefore not necessarily advisable, although there could be a good outcome in
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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