Last updated February 2009

One of the characteristic requirements for obtaining protection under industrial property law is novelty. This is a requirement is necessary for the patentability of an invention as well as for registration of an industrial design and a utility model. Every method of disclosure to the public before the priority date of the application – which is usually the date of filing or the date of an earlier national or international application – chips away at its novelty and, as a result, the possibility for obtaining the protection requested. A legal tool that softens the consequences of disclosure is the so-called “ grace period”. It offers a specific period of time in which a patent/design/utility model application may be filed in spite of the previous disclosure of the invention/design by the applicant or his/her successor in title. As a result, the novelty is not destroyed and the relevant industrial property right may still be granted.

Currently, the European Patent Convention (EPC) and Member States' patent laws do not offer a general grace period, except in specific situations in which a grace period is provided. Disclosure of an invention is not taken into account if it occurred less than six months before the filing of a patent application and if:

(1) a third person has disclosed the invention in an abusive way that obviously harms the applicants' interests;

(2) the applicant has displayed the invention at an official international exhibition falling within the terms of the Convention on international exhibitions .

In these cases, the filing of a patent application within the grace period is only possible if the applicant states, when filing the patent application, that the invention has been so displayed and, at the same time, files a supporting certificate. When calculating the six-month grace period, the date of the actual filing of the European patent application is relevant. Only where the priority date of an earlier national or international application for the same invention can be claimed (within a 12-month period after the earlier filing), is a patent application still possible.

Some countries, such as Spain and Portugal, which are Member States of the EPC, have a special regulation on grace period. The Spanish patent law offers a grace period for tests carried out by the applicant or by his legal predecessor provided that they do not imply using the invention or offering it for sale, and that they were carried out during the six months preceding the filing of the application. Under Portuguese patent law, the novelty of an invention shall not be eliminated by communications made before scientific societies or professional technical associations or for the purpose of Portuguese or international competitions or exhibitions if the patent application is filed in Portugal within 12 months. Furthermore, the grace period for abusive disclosures does not have any time limit.

It is important to mention that a grace period is traditionally recognised in the USA, where the "first-to-invent" patent system operates. Also other countries outside Europe, like Japan and Canada, include a general grace period in their patent laws. Chinese Patent Law offers a specific sixth-month grace period for inventions that have been disclosed in an obviously abusive way or disclosed at a prescribed academic or technological meeting or at an international exhibition.

In order to be protected under a Community design law a design must be new and have individual character. It is considered new if no identical design has been made available to the public before the unregistered Community design is first disclosed, or before the filing or priority date. Designs are deemed to be identical if their features differ only in immaterial details. A design can be made publicly available by entering it into the channels of commerce, publishing the design, or exhibiting the design so that it becomes known in the normal course of business to the circles specialising in the sector concerned and operating within the Community. However, thanks to the grace period provided by Community legislation, a designer (or his successor in title) can apply for protection up to a year after the first disclosure of a design without his own disclosures counting against the registration. All disclosures made by third parties throuhg an abuse of the relationship with the designer are also excluded from the assessment of novelty of the design. This grace period makes it possible for the designer or his successor in title to test the products embodying the design in the marketplace before deciding whether the protection resulting from a registered Community design is desirable. Due to harmonisation of the Community design law through Directive 98/71/EC, all the EU countries should have the same grace period regulation in their national design law regulation.

Some countries which provide protection of utility models do not provide a grace period (e.g. Poland). Other countries (e.g. Germany, Austria, the Czech Republic and Hungary) provide for a general six-month grace period to file a utility model after the disclosure of an invention.