The one-year grace period refers to the one-year time period after you start marketing your invention to others but can still apply for a patent.
The start of your marketing effort occurs when you first offer your product for sale, distribute a printed publication, or demonstrate how your product works in public. After the start of your marketing efforts, you have only one year to file a patent application. Otherwise, you cannot get a patent for your invention. Your invention has been dedicated to the public.
Should you wait one year to file your application?
Inventors are excited to learn about the one-year grace period. They can delay patent-related expenses until after they tested the market. However, we don’t recommend using the one-year grace period.
Yes, you can start marketing your product without filing a patent application to test the market. When other people see your idea and decide to compete against you, they will create prior art. Their sales and product webpages can be used to reject your later-filed application. Remember you decided to file your patent application later after you’ve tested the market. All of the activities of other people before you’ve filed your patent application can and will be used to reject your application.
The worst part is that you have to tell the Patent Office about all your competitor’s activities. You have a duty of disclosure to tell the examiner about these activities in an information disclosure statement. Otherwise, you’ll be charged with inequitable conduct when you sue your competitors for patent infringement. Your patent will be invalidated and you may even be sanctioned.
What’s the purpose of the one-year grace period?
The purpose of the one-year grace period is to give inventors a second chance if they inadvertently failed to file a patent application on their invention before they started their marketing.
The purpose is not to give inventors time to test the market. At least, the patent law isn’t written to encourage that type of behavior.
Let me explain.
Oftentimes, inventors will market their products without a patent and start to make money. Now that the product is doing well, they want to get a patent on their invention. They are afraid that others will start to compete against them and take away their market share.
In these cases, they can take advantage of the one-year grace period and file a patent application. The one-year grace period gives these inventors a second chance.
However, if others have already started to compete against them, then these inventors may be prohibited from getting a patent. The marketing efforts of these other competitors become prior art. If they wanted to protect themselves against this situation, they should’ve file their application before going to market. For this reason, we recommend filing a patent application before you start your marketing efforts.
Do foreign countries have a one-year grace period?
Many foreign countries do not have or provide different forms of a grace period.
We recommend that you file your US application before you start your marketing efforts if you are interested in foreign patent protection. In this manner, you can secure patent protection in any of the countries that have a significant economy regardless of their grace period.
This procedure keeps everything simple and you don’t have to litigate whether you filed the patent application within the grace period or not.
Countries that have a one-year grace period
Australia, Brazil, Canada, Chile, Columbia, Estonia, Japan, South Korea, Malaysia, Mexico, Peru, Philippines, Turkey, United States of America, Singapore
Countries that have a six-month grace
Albania, Eurasia, Japan, Russian Federation, San Marino
Taking advantage of the one-year grace period in the United States prevents you from getting a patent in many foreign countries that do not have the one-year grace.
Countries that do not have a grace period
Most countries of the world do not have a grace period.
Does Europe provide a grace period?
Many of the European Union member countries do not have a grace period. You must file your patent application before you start your marketing efforts.
Does Taiwan provide a grace period?
Taiwan provides a 12-month grace period for an invention that was published in any printed publication other than a patent publication
As you can see, each country is different in the length of the grace period and what types of publications the grace period applies to. Instead of trying to parse through everything, we recommend keeping it simple. File your patent application before you start to commercialize or start your marketing efforts because each country is so different in the way that they treat the grace period. In this way, you are assured that you can seek a patent in any of the major economies of the world.