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ASEAN and India – Pre-filing Public Disclosures and “Secret” Prior Art

Best practices for cost effective foreign filing require that applicants and practitioners be aware of the laws on secret prior art and non-prejudical public exposures. Two common issues which may arise in conjunction with any patent application that should be fully understood and appreciated by both patent applicants and practitioners are the pre-filing public disclosures and the “secret” prior art. This discussion will examine both of these issues with emphasis on patent practice in India and S.E. Asia.

“Secret” Prior Art:

Following the recent changes in US patent law from a ‘first-to-invent’ to a ‘first-inventor-to-file’ system, all world patent laws award the patent right to the first entity to file an application. If an earlier filed application discloses a later filed claimed invention, the later filed invention will be found to lack the requisite novelty in light of the earlier filed disclosure. Since patent applications are generally not published until 18 months after the filing or priority date, there is a period of up to 18 months where earlier filed cases are unknown to both the public and later filing applicants. This leads to “secret” prior art in which earlier filed, but unpublished, applications can be cited against the novelty of later filed claimed inventions.

Under the patent laws of most countries, the full disclosure of the earlier filed application will be used when examining a later filed application (the “total contents” approach). If a later filed invention is disclosed in an earlier filed application, the earlier filed application is the first-to-file on that matter and is therefore entitled to the patent right. (See the discussion on India below.)

The PCT is the filing method of choice for many applicants seeking patent protection in multiple countries. Under the PCT, the international (PCT) filing date is the effective national filing date in each designated state. For purposes of applicable prior art, an earlier filed application filed under the PCT will be prior art against the novelty of a later filed application just as though the filing were made directly in the national patent office. In order to give prior art status to an earlier filed but as yet unpublished application filed under the PCT, most countries require the PCT application to enter into the local national phase. If the earlier filed application does not enter the national phase, the earlier PCT-filed disclosure only becomes prior art as of its date of publication and not the international filing date. On the other hand, for countries where national phase entry is not required, every earlier PCT application will effectively be taken as secret prior art as of the international filing or priority date against the novelty of later filed inventions.

From the above discussion, it should be clear that the prior art effect of an earlier filed, unpublished application is judged on a country-by-country basis. An earlier, unpublished filing in Country A will be art against the novelty of later filings in Country A, but an earlier filing in Country A will not have a prior art effect in any other country where the earlier application was not filed in. As such, applicants should determine the conditions required for a PCT application to have prior art effect within each jurisdiction.

It is further important to be aware about “quasi-secret” prior art, potentially novelty (and inventive step)-destroying public disclosures that are not published or widely known at the time of filing. For example, papers presented at conferences held before the filing date of an application but not published until after will, in most countries, be prior art as of the date of the presentation, not the date of publication.

Pre-filing Public Disclosures:

At times, it may be necessary to run field trials, tests or experiments in order to determine if filing for patent protection is justified. However, in some cases, an inadvertent public exposure would prevent patenting in many jurisdictions because such exposures would be considered public disclosures in strict absolute novelty countries. This would result in some patent applications facing significantly narrowed scope or complete rejection as the result of pre-filing public exposures of the claimed invention.

The Patent laws of most countries have various exceptions to their absolute novelty criterion for pre-filing public exposures that occur as the result of a breach of confidentiality, abuse of a relationship with the rightful owner or otherwise wrongfully obtained information. In these cases, a patent may still be granted to the rightful owner provided that the rightful owner takes the necessary steps to file the patent application within a specified period of time. Additionally, disclosure at an officially recognized exhibition may also be non-prejudicial. In both cases, the application must be filed within a 6 to 12 month “grace period” following the wrongful disclosure or public presentation.

Over and beyond these exceptions to lack of novelty, many countries also have grace periods for pre-filing public exposures that meet the requirements under local law. It is important to realize that some jurisdictions do not forgive public exposures beyond those circumstances mentioned above. A prime example is the EPO. EPC Article 54 and 55 define the strict absolute novelty provisions of the EPC and provide for a 6 month grace period only for disclosure at an officially recognized conference or resultant of an abuse of the relationship with the rightful owner or his predecessor in title.

The former law in the US was at the opposite end, giving a one year grace period prior to filing for any public disclosure. Old 35 U.S.C. 102(b) stated: “A person shall be entitled to a patent unless – … (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.” (emphasis added) This statute was altered considerably on 16 March 2013 when the America Invents Act came into full force. Now, the US still has a 1 year grace period, but only for specific disclosures. ” … A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention … if — (A) the disclosure was made by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.” (35 U.S.C. 102(b)(1), emphasis added) The “effective filing date” is defined in 35 U.S.C. 100(i) to essentially mean the filing date of the application or, if priority is validly claimed under 35 U.S.C. 119 [Paris Convention priority] or the benefit of an earlier US filing date is claimed under 35 U.S.C. 120 or 121 the earliest date so claimed. In effect, while limiting the grace period to disclosure of information obtained from the inventor(s), the grace period was extended back in time allowing for the 1 year period to run back from the earliest “priority” date in the application.

Allowing the grace period in the US to extend from the effective filing date is not unique. For example, both Mexico (Article 18) and Brazil (Article 12) have similar statutes with their 12 month grace periods running back from the filing date or the priority date. The situation in Canada, however, is different. CA Article 28.2(1)(a) states that the subject matter must not have been disclosed more than one year prior to the Canadian filing date; Canada’s grace period does not extend back from any priority date. In all cases, however, the disclosure is limited to acts by the inventor or another who obtained the information from the inventor.

In Japan, tighter restrictions on disclosures are in place. Disclosures by a person having the right to obtain a patent by conducting a test or by making a presentation in a printed publication will be ignored provided the patent application is filed within six months of the disclosure. Additionally, Japan requires that the applicant give a thorough description of the exposure at the time of filing. (Article 30) Mexico has a similar requirement when relying on their grace period following a pre-filing public exposure (see Article 24) and Brazil reserves the right to request the details of any pre-filing disclosure.

If an invention has been publically disclosed prior to filing the patent application, there may be remedies to obtain valid patent protection in some countries by relying on the available grace periods. Be sure to check with your local agents before spending the resources to file applications on an invention which was disclosed prior to filing.

India and S.E. Asia:

The statutes relating to secret prior art in those countries with such provisions are mostly consistent with the discussion above, except for India that does not utilize the “total contents” approach

The situation relating to pre-filing public disclosures varies as much across India and the S.E. Asian countries as it does across the countries in the general discussion above. Some limit non-prejudicial disclosures to necessary experimental work (ID). The period from public disclosure to filing required also varies across the region from 6 to 12 months.

Additionally, when obtaining patent protection in a particular country, be sure to keep a close watch of the publication of filings by others in the same or related areas of technology. Remember that “secret” prior art is only secret during the period from the priority or filing date to the date of publication, a maximum period of about 18 months. With few exceptions, prior to publication earlier filed applications can only be applied against the novelty of later filed inventions.   Monitoring the relevant publications coupled with knowledge of local laws on the prior art effect of earlier filed, but later published applications will allow one to anticipate and overcome the relevant “secret” prior arts which may be relied upon by the examiner and cited against the novelty of the application during examination of the application.

“Secret” Prior Art.:

India: Indian law provides for secret prior art in the form of earlier filed, but unpublished claimed inventions. In this respect, India differs from other countries in the region that use the total contents approach discussed earlier. For an earlier filed, unpublished application to negate the novelty of a later filed invention, the later filed claims must be anticipated by the claims in the earlier filed application.

Indonesia: The law in Indonesia considers the full technical disclosure of earlier filed, unpublished applications to be prior art against the novelty of later filed applications.

Malaysia: Applications having an earlier priority date are prior art against the novelty of applications with a later priority date provided the anticipating material in the earlier application appears in the grant of the earlier application.

The Philippines: Patent applications with an earlier filing or priority date are prior art against the novelty of applications with a later filing or priority date. However, for an earlier filed application to have effect as prior art as of its filing or priority date, it must be published under the PH patent act.

Singapore: Earlier filed, unpublished SG patent applications are prior art against the novelty of later filed applications provided the anticipating material was in the application at the time of filing and also in the publication.

Thailand & Vietnam: There are no provisions under TH or VN law for earlier filed, unpublished applications to be prior art against later filed applications.

Grace Periods for Pre-filing Public Exposures:

India: India has a limited 12 month grace period for public working for purposes of necessary, reasonable trial by the inventor, successor in title or third party with the inventor’s consent. The 12 month grace period also applies to disclosure at an officially recognized exhibition, a publication from such an exhibition, a paper read before a learned society or used by a third party based on such disclosures without the consent of the inventor.

Indonesia: Indonesia’s law parallels Indian law on the conditions protected by their grace period. Under Indonesia law, the patent application must be filed within 6 months of the public exposure for R&D experimentation (testing) or presentation at an officially recognized exhibition.

Malaysia: Malaysia has a one year grace period for disclosures by the applicant or predecessor in title. A like grace period is available for disclosures resultant of abuse of the applicants’ rights. There are no apparent restrictions on the types of disclosures by the applicant that qualify for the grace period.

The Philippines: A 12 month grace period preceding the filing or priority date is available in The Philippines for disclosures by the inventor or a third party who obtained knowledge from the inventor. There is no applicable grace period for other types of disclosures prior to filing.

Singapore: The law in Singapore has a 12 month grace period applicable to public disclosures by the inventor as well as for disclosure at officially recognized exhibitions as well as disclosures of information obtained unlawfully from the inventor or in violation of a confidence.

Thailand: Thailand has a 12 month grace period for public disclosures by the inventor as well as for disclosures made in consequence of an unlawful act or at a recognized international exhibition.

Vietnam: Vietnam has a very limited 6 month grace period for publication without the permission of the person holding the right to apply for and be granted a patent, disclosure by the owner in a scientific paper or displayed at an officially recognized exhibition. There is no grace period for other types of pre-filing public disclosures.

Parting Thoughts:

Pre-filing disclosures and “secret” prior art can have a significant effect on the ability to obtain successful patent grant and protection in all the desired countries. Maintaining an awareness of the laws of each country of interest regarding grace periods, or lack thereof, and the types of disclosures that qualify for them is critical to planning a cost effective filing strategy. When a public disclosure has occurred prior to the filing or priority date of the patent application, much is at stake. It is also critical to know the requirements in each country to take advantage of their grace periods, such as requirement of filing a complete disclosure of the public exposure at the time of filing. Working closely with your local agent in each country will allow you to keep up-to-date on local laws and requirements and allow formulating an effective filing strategy to achieve a meaningful patent protection in all the desired countries.