A 6-MONTH GRACE PERIOD FOR INVENTIONS AND UTILITY MODELS, WHAT IT IS AND WHAT IT IS FOR

Not every Applicant or inventor, when filing an application for an invention or a utility model, knows that he has a 6-month grace period, which he can use.

So, we have to find out today what this “grace period” mean and what it is for? The legislation in a number of countries stipulates a “grace period” (ranging from 6 to 12 months from the date of the disclosure by the inventor or the applicant prior to filing an application about the nature of the invention or the utility model), during which the invention retains patentability, despite its disclosure. In such countries it is possible to disclose the nature of the invention, for example, by exhibiting it at an international exhibition or by publishing it in a catalog or technical journal. Filing an application for an invention, a utility model during this grace period does not destroy the patentability of the invention and, therefore, does not deprive the possibility of obtaining a patent.

If the applicant intends to file an application to a foreign state, it is desirable to keep the confidentiality of his technical solution before filing an application. In many cases, the public disclosure of an invention or a utility model, before filing an application, deprives the invention or the utility model of a novelty, making it unpatentable, if the legislation of the country does not stipulate a special “grace period.” Thus, it is extremely important for inventors, authors and applicants to try to avoid the facts of any disclosure of the nature of their technical solution prior to filing an application, as this can destroy the patentability of the invention or the utility model.

Let us dwell in more detail on the Russian legislation and understand how this rule on a grace period is regulated in Russia, and whether this period exists at all. According to Paragraph 3 of Article 1350 of Part 4 of the Civil Code of the Russian Federation “The disclosure of the information concerning the invention by the author of the invention, the applicant or any person, who has received this information from them directly or indirectly (including as a result of exhibiting the invention at the exhibition), which made the information on the nature of the invention available to the general public shall not be deemed a circumstance precluding the recognition of the invention's patentability, provided the application for the patent for an invention has been filed to the Federal Executive Authority on Intellectual Property within six months after the date of the disclosure of the information. The burden of proving the fact that the circumstances, due to which the disclosure of the information does not preclude the recognition of the invention's patentability, have existed shall be on the applicant.” In relation to utility models, the same rule is given in Paragraph 3 of Article 1351 of the Civil Code of the Russian Federation.

The existence of this rule allows the applicant, subject to the conditions enumerated therein, obtaining a patent, despite the fact that the information, which is sufficient to deny a novelty (for utility models) and a novelty or an inventive step (for inventions), has been included in the state of art before the priority date of the inventions/utility models.

Thus, the above rule demonstrates that the Russian inventors, authors and applicants have the above 6-month grace period and are entitled to use it.

For a more complete and unambiguous understanding of the “grace period”, how it works and how it is assessed by the Russian Patent Office, we shall give an example from the practice of company Zuykov and Partners.

Company Romashka (the name of the company is fictitious for the purpose of observing the confidentiality of the information) has contacted our company with a request to assess the possibility of patenting the technical solution it had. The experts of our company conducted an international patent and information search to assess the patentability of the technical solution it had. Based on the search results, the patent attorney advised the client to file an application for a utility model. Based on our recommendations, Romashka, LLC made a decision to file an application for a utility model, indicating as an applicant and an author – an individual, who was in labor relations with the above Romashka, LLC, that is, he was this company’s employee. As a result of the substantial examination of the application, the expert of the office made a request, in which the claimed technical solution was contrasted with the catalog of products of Romashka, LLC, published on the official website of the company 4 months prior to the date of filing the application, as a source of information discrediting a novelty of the claimed technical solution.

In order to overcome the examination request, the experts of our company advised the applicant to include into the applicants' list Romashka, LLC, on the site of which the undesirable catalog of products had been identified. After Romashka, LLC was included into the applicants' list, we responded to the request in which we placed an emphasis on a 6-month grace period, which the applicant had after publishing the information disclosing the nature of the technical solution prior to the date of filing the application. Thus, there was no alternative for the examination, but to make a decision on granting a patent. In this situation, it helped that the applicant, an individual, was an employee of Romashka, LLC, and the information on the website had been disclosed by Romashka, LLC, that is, by the applicant itself. Otherwise, if the information had been disclosed by the different company, not related to Romashka, LLC, then it would have been extremely difficult to overcome the examination’s request, and most likely, it would have been impossible, and the refusal to grant a patent would have followed.

Thus, this example demonstrates that the disclosure of the information about one’s own technical decision prior to the date of filing an application to the office can be used against the applicant, and to avoid such problems, it is first necessary to file an application to the office and only then to disclose the nature of one’s own technical decision and publicize it.