As South East Asia becomes an increasingly popular patent filing destination, we explore the region’s grace period provisions and their limitations.
An innovation is generally not patentable if it has been publicly disclosed before patent protection is applied for. Commercial interests however often compete with non-disclosure. For example, showcasing prototypes in trade exhibitions early for market feedback may be important from a product development perspective. Sometimes experimentation for research and development purposes may be an unavoidable part of product development.
Some countries offer a “grace period” which, with conditions, guards patentability against self disclosure by inventors or patent applicants, and sometimes unauthorised disclosure by a third party, provided that patent protection is applied for before the grace period expires. While grace periods can sometimes be useful in avoiding prior art, it should not be routinely relied upon for late-filing for patent protection because of various limitations.
Below we consider the grace period provisions of six selected South East Asian countries: Indonesia, Malaysia, Philippines, Thailand, Vietnam and Singapore. A table comparing their grace periods is set out below.
|
|
Indonesia |
Malaysia |
Philippines |
Thailand |
Vietnam |
Singapore |
|
Grace period duration |
6 months (self disclosure)
12 months (unauthorised disclosure) |
12 months |
12 months |
12 months |
6 months |
12 months |
|
Applicable to self disclosure |
Yes |
Yes |
Yes |
Yes |
Yes |
Yes |
|
Applicable to unauthorised disclosure |
Yes |
Yes |
Yes |
Yes |
Yes |
Yes |
|
Example of limitations |
Limited circumstances of self disclosure |
Limited circumstances of unauthorised disclosure |
Novelty only |
Novelty only |
Limited circumstances of self disclosure |
Limited circumstances of self disclosure |
In all six countries considered, grace period provisions exist and are generally applicable to both self and unauthorised disclosure. The grace period is generally 12 months, with the exception of only a 6 month grace period in Vietnam and for self disclosure in Indonesia.
Grace period provisions however often come with limitations. Further, different countries impose different limitations. For examples:
Note that the above examples are non-exhaustive and there are often additional limitations. It is therefore important to seek a patent attorney’s advice if grace period provisions are to be relied upon.
As mentioned, even with the existence of grace period provisions, patent applicants are generally advised against delaying patent lodgement. First, grace period provisions often only guard against disclosure derived from the inventors (be it self or unauthorised disclosure). Independently developed innovations will still be prior art. Second, law on grace periods may change over time. It may be difficult or time consuming to keep track of changes in law in all your markets. Third, some jurisdictions (e.g. Europe) simply do not have grace period provisions. Disclosing before lodgement may therefore geographically limit your patent protection.