Wednesday, 09 July 2014 01:29
Multi Access Limited (“Multi Access”) recently succeeded in their claim to cancel the trademark registrations of a local entrepreneur, Dhalim Soekodanu (“Dhalim”), on the ground of bad faith, pursuant to Trademark Law No. 15 of 2001, Article 4.
Multi Access is the owner of numerous trademark registrations for “王老吉” which is pronounced as WONG LO KAT in Cantonese and WANG LAO JI in Mandarin. It is popularly used for herbal tea products. “Wang” or “Wong” is a Chinese surname which means “King,” “Old” and “Lucky.” The said mark is registered in Argentina, Australia, Benelux, Botswana, Brazil, Brunei, Canada, Cambodia, Chile, Costa Rica, Croatia, Cuba, Egypt, EU, Germany, Hongkong, Iceland, India, Indonesia, Iran, Iraq, Israel, Italy, Japan, Jordan, Kenya, Kuwait, Laos, Lebanon, Macau, Malaysia, Mexico, Monaco, Morocco, Myanmar, Namibia, New Zealand, Nigeria, Norway, Oman, Pakistan, Panama, Peru, Philippines, Portugal, Korea, Russia, Saudi Arabia, Singapore, South Africa, Spain, Sri Lanka, Sudan, Switzerland, Swiss, Taiwan, Thailand, Turkey, United Arab Emirates, Uganda, America, Britain, Venezuela, Vietnam and Yemen. In Indonesia, it was registered in class 32 as early as 1991.
Dhalim Soekodanu, a local Indonesian entreprenuer, also registered the mark Wang Lao Ji in a different style
in classes 5 and 32 in 2002.
In the course of the proceedings, Multi Access argued that the subject registration is similar in appearance, spelling and/or the sound. Further, Multi Access established the well-known status of the Wong Lao Ji trademark by demonstrating the extensive trademark registrations and marketing campaigns conducted in the promotion of the Wong Lao Ji products in many countries, including Indonesia. Evidence submitted by Multi Access included copies of certificates of foreign registrations/applications, advertisement, rewards and favourable trademark cancellation decisions in favour of Multi Access.
In ruling in favor of Multi Access, the Judges of the Central Jakarta Commercial Court declared Wong Lao Ji to be a well-known mark and found Dhalim to have acted in bad faith in hijacking the said mark.
The foregoing decision underscores the policy under Article 6 of the Trademark Law which states that an application shall be rejected if the mark is similar in its essential part or entirety with a well-known mark owned by another party for the same kind of goods or services. Thus, a trademark registration obtained in bad faith will rarely be upheld by the Courts.
Tuesday, 10 June 2014 01:49
Design laws vary by country. Some countries classify designs as patents and some have separate "registered design" or “industrial design” systems. In some countries, designs of products must be whole products in order to be registrable and not parts of products. Some countries allow protection of only part or parts of the product but the said part or parts of the product must be clearly identified in solid lines in the representations while the parts for which protection is not claimed must be indicated by means of dotted or broken lines.
A comparison of primary features of design laws in the ASEAN countries is summarized in the table and discussed below.
In Indonesia, it is possible to register “creations of forms, configuration or compositions of lines or colors, or lines and colors, or the combination thereof in three dimensional or two dimensional form which give an aesthetical impression.”
Although Indonesia allows multiple embodiments in one application, the embodiments must satisfy the “unity of design” requirement. Should the Examiner find that there is no “unity of design,” the embodiments can be split into separate applications later in the examination stage.
While “novelty” is a requirement, no substantive novelty examination is performed prior to registration. A statement of novelty pointing out the portion claimed as novel is required.
In the Philippines, an industrial design is defined as “any new or original creation relating to the ornamental features of shape configuration, form or combination thereof, of an article of manufacture, whether or not associated with lines, patterns or colors, which impact an aesthetic and pleasing appearance to the article.”
Philippine design practice allows for the use of multiple embodiments. However, it is important that the articles should be of substantially similar dominant design features that are embodied in a single design concept and relate to the same sub-class of the International classification or same set or composition of articles.
Industrial designs or models in Singapore are defined as “the features of shape, configuration, pattern or ornament applied to an article by any industrial process.”
In Thailand, protection can be obtained for “any configuration of a product or composition of lines or colours that gives a special appearance to a product and can be used as a pattern for a manufactured or handcrafted article.”
It is important to note that Thailand does not allow multiple embodiments in one application and there is no provision for filing a divisional application in Thailand. Hence, to validly obtain protection for several embodiments, they must be filed separately in the filing stage.
Industrial design patents “protect the outer appearance of a product represented by lines, three-dimensional forms or colors or a combination of these … and which may serve as a pattern for the manufacture of an industrial or handicraft product.”
All design filings must include views of all sides of the article and a perspective view.
Since design laws and practice varies between countries, it is important that everyone considering industrial design protection must be aware of the different requirements and work with their agents in each country to obtain the most efficient and cost effective route to registration.
Friday, 30 May 2014 01:21
Patents were first used as collateral to secure financing by Thomas Edison in the late 1880s. Edison used his patent for the incandescent electric light bulb as collateral to secure financing to start his company, the General Electric Company. Since Edison’s use of his patents as collateral, intellectual property has been used as collateral in the United States. Although the use of intellectual property as collateral did not gain popularity in the late 1800s with Edison’s use, it has become quite popular in recent years.
A patent is a right granted to the owner of an invention that prevents others, without the owner’s permission, from making, using, importing or selling the invention. A patentable invention includes a product or a process that gives a new technical solution to a problem, or a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work. A patent has a term of 20 years from the date of filing, subject to the payment of annual renewal fees. One main thing to think about when using patents as collateral is the fact that patent protection is territorial. If filed and granted in Singapore, a patent is only enforceable within Singapore and therefore, the protection is only afforded to a patent owner within Singapore.
On April 8, 2014, Singapore announced details of a new financing scheme aimed at helping local businesses secure bank loans by using their patents as collateral. The Intellectual Property Office of Singapore (IPOS) is the agency that implements this scheme and hopes that this will spark the interest of local companies.
Companies interested in availing themselves of the scheme must be local enterprises incorporated in Singapore and use a granted patent as collateral. As part of the approval process, their patent will be valued by a member of an IPOS-appointed panel, which includes valuation companies, i.e. American Appraisal Singapore, Consor Intellectual Asset Management and Deloitte & Touche Financial Advisory Services. The panel will determine the worth of the patent to help banks decide on how much to lend. Three local banks – DBS, OCBC and UOB – are currently participating in the scheme.
This two-year plan by IPOS will involve the Singapore government sharing the default risk with participating banks. The banks will start accepting loan applications under this scheme from late second quarter of this year until April 2016. Interest ranging from 3.5% to 7.5% will be charged for loans of between one and six years. This rate is lower than the interest charged to smaller companies seeking unsecured loans, which is 8% to 10%.
IPOS chief executive Tan Yih San, during the scheme’s launch, said: “What we are (doing) is to work with the banks to recognise intangible assets, which is not quite something that is readily available in the loan market today.” He added that the scheme will open opportunities for companies to grow and expand not just locally, but overseas as well.
During the same event, Indranee Rajah, Senior Minister of State (Law and Education), said: “There is a growing trend of businesses being valued based on intangible assets. According to a report by Brand Finance, 42% of enterprise value in Singapore was in intangible assets in 2012, up from 35% in 2011. With IPOS’ new IP Financing Scheme, businesses can monetize their IP assets,” she added.
There are several advantages of using intellectual property as collateral.
One advantage is that intellectual property can be more secure than other forms of collateral. Most investors only invest in intellectual property that is receiving licensing royalties. The royalty payments are the ultimate source of cash that repay the loan. Hence, there is a consistent source of cash flow to repay the loan through licensing and, therefore, lower the risk of default. Another advantage is the increased return the owner of the intellectual property earns. Using intellectual property as collateral increases the owner’s return through increased leveraging. Many royalty streams are collected in one lump sum rather than over time, and this lump sum can then be invested in future or current projects that have a higher return than the cost of financing.
On the other hand, risk is the main disadvantage in using intellectual property as collateral. However, this can be minimized through proper loan structure.
As Singapore is increasingly becoming a technology-driven, knowledge-based economy, the use of intellectual property as collateral will become popular moving forward
Tuesday, 13 May 2014 08:52
In 2009, Fun Ranch Mega Development, Inc. (Fun Ranch) filed several trademark applications for a Facade of a Building for use on children’s entertainment and amusement center. The applications were rejected by the Examiner on the ground that the mark may not be registered because it does not function as a trademark and is not capable of distinguishing the goods or services.
On Appeal to the Director of Trademarks, Fun Ranch claimed that its mark is a unique design of a facade of a building that functions as a service mark. It argued that the mark is a visible sign that is distinctive of its business as proven by the fact that no other design similar to it belonging to a different recreational or amusement establishment was cited by the Examiner.
The Director of Trademarks denied the appeal, hence the case was elevated to the Director General of the Intellectual Property Office of the Philippines (IPOPHIL).
In its decision handed down in November 2013, the Director General stated that the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product. Significantly, a mark to be registered must be a visible sign capable of distinguishing the goods and services of an enterprise.
An examination of the subject applications shows the lack of a distinguishing feature that would make it a distinct "facade of a building" used by an enterprise for children’s entertainment and amusement center. This representation of a facade of a building does not function as an indicator of Fun Ranch’s business enterprise. In sum, Fun Ranch’s use of a unique facade of a building does not qualify for trademark registration.
This case demonstrates the importance of a trademark being a source identifier. Failure of a mark to function as such will result in disqualification for trademark registration.
Thursday, 10 April 2014 02:56
The Government of India, Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) has published the Patent (Amendment) Rules, 2014 on 28 February 2014. The amendments are effective from the date of publication.
The salient aspects of the amended rules include:
Applicant: Introduction of a third category of applicant for patent in the form of “small entity”.
The fees charged to small entity applicants have been fixed in between the fees for a natural person and a large entity. The applicants can now be categorized as follows:
(a) Natural Person Applicant: Any natural person either alone or jointly with other natural persons.
Official Fee: Establishment of a revised fee structure for filing of patent application as well as other proceedings before the Patent Office.
The revised fee structure is as follows:
Natural Person: Approx. 60% increase from the previous fee for a natural person.
Small Entity: Equivalent to the previous fee for a large entity.
Large Entity: Approx. 100% increase from the previous fee.
Copy of the revised fee schedule can be downloaded here.
Furthermore, filing an application or document with the Patent Office in hard copy (i.e., not availing the e-filing facility/online mode) would incur an additional 10% official fee in the respective category.
Also, in case of partial or full transfer of an application from an applicant with Small Entity status to an applicant with Large Entity status, the difference, if any, in the scale of fee(s) between the fee for Small Entity and the fee for Large Entity, in the same matter, is to be paid by the new applicant along with the request for transfer.
Tuesday, 01 April 2014 04:18
Pursuant to the recent amendments of the Philippines Intellectual Property Code (Republic Act No. 8293), the Intellectual Property Office of the Philippines (“IPOPHL”) issued Office Order No. 13-170 which provides the rules and regulations for the exercise of its enforcement functions and visitorial powers.
An Intellectual Property Rights Enforcement Office (“IPREC”) was established to receive information, complaints or reports from rights holders, other government agencies and the public in general relative to Intellectual Property Rights violations. The IPREC will be headed by the Director General and assisted by designated IPOPHL personnel.
IPOPHL enforcement actions are initiated by filing a verified complaint by the rights holder or its representative. Within 30 days from receipt, action must be taken to undertake any or all of the following enforcement actions:
(a) issuance of notice/warning to the respondents; (b) issuance of a visitorial order (“VO”) on the subject premises; (c) issuance of compliance order (“CO”) against the respondents; (d) immediate filing of administrative complaint before the local government unit concerns or other government agencies/tribunals; (e) referral of the case to the law enforcement agency for case build-up; (f) recommendation for application of search warrant; (g) dismissal of the complaint; (h) referral of the case to other government agencies for filing of charges for violation of other laws, rules or regulations; (i) such other actions necessary to ensure compliance with the provisions of the IP Code.
In the event a VO is issued, it shall be valid 10 days from issuance. The nature of the visit and the complained IPR violation must be duly explained to the owners, employees or representatives of the business establishment. Only those items prominently displayed in business establishments shall be noted in the Post-Operation report. The Director General may likewise issue a CO directing the owner of the business establishment to comply with the IP Code within 60 days to avoid the filing of an administrative action.
With fresh enforcement powers, IPOPHL is expected to provide the necessary assistance to trademark owners and support the fight against IPR violators in the Philippines.
Tuesday, 01 April 2014 03:04
The recent decision by the Intellectual Property Office of Singapore (IPOS) between V Hotel and Jelco Properties concerning an Application for Restoration of Trademark Application and Request for Extension of Time (EOT), shows that IPOS continues to take a stringent position with regard to procedural defaults such as an attorney’s delay in responding to IPOS within the deadline.
Friday, 07 March 2014 03:57
In Guy Neale and others v. Nine Squares  SGHC 249, the Singapore High Court dismissed a trade mark invalidation suit and confirmed the requisite attributes for the establishment of goodwill in Singapore.
The Plaintiffs in that case comprises fourindividuals and two companies which carry on business as a partnership operating the restaurant, bar and club business known as “Ku De Ta” in Bali, Indonesia. The “KU DE TA” trademark was registered in Indonesia on March 20, 2001.
The Defendant is the registered owner of two trademarks in Singapore bearing the name “KU DE TA” (the SG marks). The 5th Plaintiff was a shareholder of the Defendant and was involved in its activities. He was made a party as the 5th Plaintiff because the action was brought by the “partnership” of which he was a party to. However, he gave evidence on behalf of the Defendant.
The 1st SG mark was registered on February 16, 2004, in Class 43 (restaurants, etc) as a trademark in Singapore. The 2nd SG mark was registered on June 30, 2009, as a trademark in Singapore to protect Ku De Ta-branded apparel, jewellery and music. The Plaintiffs instituted proceedings against the Defendant for:
With respect to ascertaining whether the applications to register the SG marks were made in bad faith, the High Court reiterated that an application for the registration of a trademark would be made in bad faith if the defendant’s conduct in applying for the registration of the trademark fell short of the normally accepted standards of commercial behaviour; and if the defendant subjectively knew of facts which would have made an ordinary honest person realize that what the defendant was doing would be regarded as breaching those standards.
To establish goodwill in Singapore, the Plaintiffs have to show the presence of actual or potential customers in Singapore at the material time. Indeed, the Plaintiffs’ grounds for invalidating the SG marks have a common denominator – the Plaintiffs must show that their “KU DE TA” trade mark was an earlier trademark within the meaning of the Trade Marks Act (Cap. 332).
In respect of the 1st SG mark, while the international publicity of Ku De Ta cannot be discounted in considering whether the trademarks were well known in Singapore, such publicity cannot be as relevant and significant as the publicity and advertising conducted in Singapore. Indeed, the ultimate inquiry is whether the trademark is well known in Singapore. Online travel guides and newspaper articles from other jurisdictions are of limited assistance unless there is proof of their distribution in Singapore or that they were read by Singapore residents. Mere publication of a book in Singapore does not imply that it was distributed here at all. In the circumstances, the court found that the evidence did not show on a balance of probabilities that Ku De Ta enjoyed goodwill in Singapore as at February 16, 2004.
In respect of the 2nd SG mark, the Plaintiffs submitted that Ku De Ta Bali enjoyed goodwill in Singapore when the Defendant applied to register the 2nd SG mark on June 30, 2009. In this respect, the High Court agreed that it was likely for Ku De Ta Bali (as a restaurant operating in Bali) to be well-known to the relevant sector of the Singapore public as well. However, the High Court noted that the 2nd SG mark was registered to only protect Ku De Ta-branded apparel, jewellery and music. In the circumstances, while the High Court was prepared to find some goodwill in Singapore as at June 30, 2009, for Ku De Ta as a restaurant, the High Court found that the evidence did not support the finding of goodwill as at that date for Ku De Ta-branded apparel, jewellery or music.
By reason of the above, the Plaintiffs’ claims vis-á-vis invalidation of the trade marks and the tort of passing-off also failed.
Thursday, 06 March 2014 07:40
The Intellectual Property Office of Singapore (IPOS) has announced that the amendments to the Singapore Patents Act and Rules will come into force on 14 February 2014. This new system will affect all new Singapore patent applications, new Singapore national phase applications as well as new divisional applications filed on or after 14 February 2014.
The amendments will introduce several significant changes to both the requirements and procedures for obtaining a patent in Singapore, which include the change from a ‘self-assessment’ system to a ‘positive-grant’ system. Please find below a table highlighting the new changes to the system for your easy reference.
Positive grant system in more detail
Under the positive grant system, only applications that meet the patentability requirements can proceed to grant, i.e. only if a Notice of Eligibility is issued. The Notice of Eligibility is issued if the claims of the application are found to be novel, inventive and industrially applicable after ‘Substantive Examination’ or ‘Supplementary Examination’.
On the other hand, if applications do not meet the patentability requirements, a Notice of Intention to Refuse will be issued. The applicant would then have the option to request an ‘Examination Review’ or just allow the application to be finally refused.
‘Substantive Examination’ and ‘Supplementary Examination’ will be discussed further below:
The applicant may file a request for local substantive examination within 36 months from the filing date or priority date, whichever applies. The substantive examination is performed based on either (i) a local search report issued by Singapore (only if a request for search is filed within 13 months from the filing date or priority date); or (ii) a foreign search report issued for a corresponding foreign application. Alternatively, the applicant may request a combined search and examination within the 36-month deadline.
If the Examiner has objections on e.g. the patentability of the claims, clarity of the specification, support of the claims, additional matter, and/or double patenting, a Written Opinion will be issued detailing each objection. A response to the Written Opinion must be filed within 5 months from issuance of each Written Opinion. The substantive examination process must be completed within 18 months from the issuance date of the first Written Opinion.
Upon completion of the substantive examination process, the Examiner will issue a Substantive Examination Report along with a Notice of Eligibility or a Notice of Intention to Refuse. For the latter, the applicant would then have the option to file a request for an Examination Review or allow the application to be finally refused.
Apart from the Substantive Examination option discussed above, the applicant may opt to obtain a Singapore patent on the basis of foreign examination results issued for a corresponding foreign application, by filing a request for Supplementary Examination within 54 months from the filing date or priority date, whichever applies. Required documents for filing the request include (i) a copy of either the corresponding foreign patent or the final examination results with allowed claims referred to in the results; and (ii) a table setting out how each Singapore claim is related to the allowed claims of corresponding application.
If the Examiner has objections on e.g. the support of the claims, additional matter, and/or double patenting, a Written Opinion will be issued detailing each objection. A response to the Written Opinion must be filed within 3 months from issuance of each Written Opinion. The supplementary examination process must be completed within 6 months from the issuance date of the first Written Opinion.
Upon completion of the supplementary examination process, the Examiner will issue a Supplementary Examination Report along with a Notice of Eligibility or a Notice of Intention to Refuse. For the latter, the applicant would then have the option to file a request for an Examination Review or allow the application to be finally refused.
We hope that the above information is helpful to you. Meanwhile, if you have any question on any of the above information, please do not hesitate to contact us.
Tuesday, 07 January 2014 07:27
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.
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.