Can you obtain patent protection for your invention when it has been disclosed?

patent protectionConfidentiality may not be the first thing that comes to your mind when you think about patenting your invention but it is of the utmost importance if you wish to secure your rights in as many countries as possible.

Our recommendation is to always talk to your patent attorney when you have a new invention and file your patent application before you begin discussions with third parties (whether under the protection of a confidentiality agreement or not). However, if your invention is publicly disclosed before you have filed your patent application, perhaps through an accidental publication on your website or breach of a confidentiality agreement by a party you have been in discussion with, for example, here is what you can do to maximise the patent protection available to you.

Timing

The first step is to immediately contact a patent attorney. Time is of the essence! Once the invention has been disclosed, you only have a short amount of time to lodge your patent application before your ability to secure a patent for the invention will be irrevocably lost. While you can still seek patent protection after a public disclosure, the number of countries and regions available are significantly reduced.

Fortunately, a number of commercially valuable countries have implemented what is known as a “grace period”. The “grace period” allows those who have had their invention publicly disclosed prior to filing a patent application to still pursue patent rights. Some of the countries that have grace period provisions include Australia, New Zealand, the United States of America, Canada, Japan, South Korea and Singapore.

Geographic considerations

Unfortunately, many countries, including a large number of European countries, do not have such grace period provisions. Therefore, it is important that your invention be kept a closely guarded secret if you wish to have the opportunity to protect your invention in as many countries as possible. Of course, we understand that sometimes these things happen inadvertently, and our team of experienced patent attorneys are always ready to help in such an event.

If you are concerned that your invention may have been disclosed then please contact us to arrange a consultation.

Jeremy Moller

by Jeremy Moller, Senior Associate

Pulari Thangavelu

by Pulari Thangavelu, Technical Assistant/Trainee Patent Attorney



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