22 May 2014

Grace Period - Australia

This is the first in a series of posts concerning grace periods around the world. Australia is a good place to start.

But first of all, let's consider what is meant by "grace period". This is not the convention period governed by the Paris Convention. I see that confusion often. Rather, it is a period of grace for a public disclosure made by the inventor(s) before filing the first patent application covering the invention. Usually, such a disclosure would result in the invention no longer complying with our novelty and inventive step requirements. More here in connection with those requirements.

In Australia, that grace period is 12 months. However, there are some important considerations:

  • The patent application must be accompanied by a complete specification. This means that it will be necessary to file either a standard or an innovation patent application. International applications are regarded as standard patent application, so the filing of an international application can also be effective. 
  • A third party who takes definite steps to exploit the invention before the application is filed has a defence to an infringement proceeding brought once the patent is granted.

You should never rely on the grace period, unless you have no choice. The grace period does not apply in most other countries. The public disclosure will prevent you from obtaining valid patent rights in those countries.

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