An invention must be new or novel. An invention is new if, prior to the date of application, it is not publicly disclosed in any form or language anywhere in the world. ‘Disclosure’ includes publication either in a technical journal or on the internet. If an invention is published before a patent is applied for, it will not be novel and it will not be possible to patent.
Grace periods
The Australian patent law provides a 12 month “grace period” to file a patent application despite disclosure by the inventor.
What does this mean?
If an inventor discloses their own invention prior to filing a patent application, the inventor has 12 months from the date of this disclosure to file a patent application. If the application is filed within the grace period, the disclosure is NOT taken into consideration when determining novelty.
Why have a grace period?
The grace period is important for inventors who are also researchers and who may wish to publish written works about their invention or discuss the invention at conferences. The grace period can also be important for inventors who want to display prototypes of their invention at trade shows or other events.
Example A new pesticide
Zamir has made a new pesticide for wheat crops that has fewer chemicals than other pesticides and which can provide high resistance against pests. Zamir also has an online blog where he often discusses his inventions. Prior to filing his patent application, Zamir publishes important information about the invention on his online blog - this qualifies as public disclosure. If Zamir fails to file a patent application within 12 months from the date of disclosure (i.e. within the grace period), his product will lose novelty and he will not be able to secure patent protection.
Understanding the legal terms
You may see some of these terms if you read more about patents. They relate to the novelty of an invention. Here’s what they mean:
Priority date
The ‘priority date’ is the date on which the patent application is filed. A priority date or filing date is important for various reasons including determining novelty of an invention. If an invention or any key aspect of the invention is generally known before the priority date, the invention may not be considered new or novel.
For example
Zamir files a patent application within the 12 month grace period on 10th March 2018. This date is known as the ‘priority date’ for his patent application. No one else will be able to later file a patent application for the same product and claim ‘to be the first person’ to come up with the invention. From this date, Zamir’s patent application will also become part of the ‘prior art’ for assessing the novelty of any future patent applications.
Prior art
Any information that is publicly available before the priority date is known as “prior art”. Prior art may include publications (in any form); a previously filed patent application (anywhere in the world); or a public display of the invention.
To determine whether an invention is ‘novel’, the patent examiner working in the Patent Office will compare the invention (as described in the patent application) against the prior art.
Please note that what is considered as prior art depends on the nature of the patent application.
For example
Tim is a regular follower of Zamir’s blog. He draws inspiration from Zamir’s recent invention and develops a low chemical but high resistance pesticide for cotton plants only. While determining whether Tim’s invention is novel, Zamir’s patent application (amongst other things) may be considered as prior art.
