Common Patent Misconceptions - Myth #4 - Disclosures

By Osman Ismaili, September 15, 2020

This article is part of a series on commonly held misconceptions about patents. Many prospective patentees often have unfounded reservations about patenting their inventions. The aim of this series of short articles is to debunk these common myths around patent protection.

Patent Myth #4: Even if I publicly disclose my invention, I can still get a patent application filed by the 12-month mark from the disclosure, without any repercussions.

This myth is only partly true with an important caveat. Yes, Canada, the US, and a few other countries offer a special type of grace period for inventors who have made a public disclosure of their invention. The inventors have until 12 months from the date of their public disclosure to file for patent protection within each of those countries. “Within each of those countries” is very important to remember, which means that if an invention is publicly disclosed anywhere in the world and protection is intended to be sought, for example, in both Canada and the US, then both a Canadian national filing and a US national filing must take place before the 12-month period expires.

Public disclosure is where you have disclosed your invention to anyone who is not bound by a non-disclosure or confidentiality agreement to keep your invention a secret. Does this mean that there is still a risk in publicly disclosing an invention before officially filing your patent? Yes, there is a risk that you might not get your patent in some major jurisdictions that do not offer the one-year grace period from the date of public disclosure.

In fact, while only a handful of jurisdictions allow for this one-year grace period, most other jurisdictions around the world do not, and require “absolute novelty” (which essentially means there must not be any sort of public disclosure before the filing date of the application). “Absolute novelty” requiring countries include Europe and Asia, two massive markets which a company certainly may not want to miss out on, depending on the type of invention and their market expansion goals.

It is also very important to note that the grace period works a little differently in Canada compared to the US, because of US provisional patent applications. In the US, if an invention was publicly disclosed on January 1, 2019, then a US national filing must occur by January 1, 2020 (1 year after). This first US filing could be a provisional application, which is essentially a temporary, informal application. Subsequently, one more year after that, by January 1, 2021, the US provisional application needs to be converted to a regular, full US application.

Meanwhile, in Canada, there is no equivalent to a US provisional application and as a result, only full applications can be filed in Canada and must be filed within the 12-months period from the date of disclosure. This means that, if an invention was disclosed (anywhere in the world) on January 1, 2019, and if a US provisional patent application was filed on December 31, 2019, a full Canadian application must still be filed by January 1, 2020 (only 1 year after disclosure). In Canada, a formal Canadian application is the only national application that can be filed once a public disclosure has been made.

You may be thinking that the US system essentially allows applicants to file a US formal application almost two years after a public disclosure, and the Canadian system provides only one year for a Canadian application – and you are absolutely correct. It is important to remember this significant difference between US and Canadian patent law.

While a US provisional application could still be used as a priority document for a later Canadian filing, the Canadian application must be filed within 12 months from the date of public disclosure.

If you have an idea that you feel may be patentable and you are considering disclosing it in any way, please feel free to reach out to MBM for a free consultation.