As Australians are adapting to the new Covid-Normal, many of us are thinking about travelling interstate or overseas to attend trade shows and conventions.
While trade shows and conventions provide you with an opportunity to show off new products, present your research, make business deals, and network, public disclosure of your invention can also put your intellectual property rights at risk.
In many countries, publicly disclosing your invention prior to filing the appropriate intellectual property rights may forfeit your right to seek the protection of your invention.
However, “grace period” provisions in some countries mean that you may still be able to obtain valid intellectual property rights for your invention in some jurisdictions.
Grace Period provisions
Many countries provide “grace period” provisions in their design and/or patent laws, which enables you to still seek protection on your invention. However, not all countries have these provisions, and the provisions may vary by country, the type of intellectual property right and the reason behind the disclosure.
Typically, a grace period allows 6 or 12 months from the initial public disclosure for the patent or design applicant to file an application. Under grace period provisions, the disclosure is not considered prior art and will not be considered when assessing if the invention is new and/or inventive.
While the United States and the European Union provide a 12-month design grace period for the prior disclosure of a design, Australia and India presently only provide a 6-month grace period under very limited circumstances (such as a display at an officially recognised international exhibition).
Significantly, there are no design grace period provisions in China. This means that if the design is publicly disclosed anywhere in the world, a valid design registration may not be available in China.
While a 12-month patent grace period is available for patents in the United States, Australia, Canada, New Zealand and Japan, a 6-month patent grace period is available under very limited circumstances in China and most European countries (including France, Germany, and the United Kingdom).
Many countries have provisions to exempt disclosures under certain circumstances and provide a limited 6-month grace period.
For instance, if the disclosure was an evident abuse in relation to the applicant, such as a result of a breach of confidence or if the disclosure was without the consent of the applicant or patentee, many countries have some provision to exclude such disclosure from consideration.
In addition, disclosures at an officially recognised international exhibition or learned society may also be exempt. For example, World Expo 88 “Leisure in the Age of Technology” held in Brisbane was an officially recognised international exhibition.
In summary, before you go to a trade show or convention, you should carefully review any products or presentations for potential intellectual property and consider filing a design and/or patent application to protect your intellectual property rights.
Intellectual property protection is the cornerstone of any successful business. Being proactive and protecting your intellectual property rights before you disclose your invention ensures you do not lose valuable rights to your invention in markets that are important to you.
Feel free to contact us at Kings for assistance in assessing the registration of your invention.