When inventors have successfully developed a product or process which solves a specific technical problem after numerous researches, experiments, trials and revisions, a piece of common advice given to the inventors is to prioritize filing a patent application before disclosing their invention to the public. While it is understandable that some inventors might have a plan to commercialize their research work and output as soon as possible, or some simply want to share their breakthrough with their families or peers, considering the amount of time, money and effort spent, it is important to remember that such public disclosure may become the reason of failure to obtain a patent in the future.
Before we elaborate further on how a public disclosure leads to the failure of obtaining a patent for an invention, let’s briefly look at the requirements of a patent.
Basic Requirements of a Patent
Generally, an invention is patentable if it is novel and inventive. An invention is regarded as novel if it is not anticipated by prior art. According to the Malaysian patent law, prior art is defined under Section 14(2) of the Malaysia Patents Act as follows:
- everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention;
- the contents of a domestic patent application having an earlier priority date than the patent application referred to in paragraph (a) to the extent that such contents are included in the patent granted on the basis of the said domestic patent application.
Public disclosures as mentioned in item (a) may include academic publications such as journals, master’s theses, Ph.D. dissertations, or other disclosures such as exhibitions, seminars, conferences or advertisements.
Discovery of Public Disclosure by a Patent Examiner
During the prosecution of a patent application, an Examiner will be allocated to determine whether the substantive requirements, such as novelty and inventiveness of the invention claimed in the patent application have been met. While conducting search and examination, if the Examiner discovers that the claimed invention has been publicly disclosed prior to the filing of the patent application, the claimed invention may be regarded as not novel and thus not patentable, even if the disclosure was made by the inventors themselves.
However, to have such an adverse effect on the patentability of a patent application, the prior disclosure must be an enabling disclosure, which is regarded as a disclosure containing information that is sufficient to enable the skilled person, and taking into account the common general knowledge in the field at that time, to practice and achieve the technical teaching of the invention claimed in the patent application.
It is difficult to overcome the novelty objection in a situation where there is evidence of a prior enabling disclosure of the invention. Due to the non-compliance of novelty requirement, the patent application will have high chances of rejection and thus, obtaining a monopoly by way of being granted a patent may no longer be possible.
Possibility to Pursue a Patent Protection After Disclosure
Now that we are clear with the importance of having a patent application filed before an invention is disclosed to the public, is there an opportunity to pursue patent protection if a public disclosure has been made?
The good news is YES – in some countries such as Malaysia, Singapore, Indonesia, Thailand, Philippines, Vietnam, Korea, Japan, Australia and the United States, a grace period for filing a patent application after public disclosure is available. The grace period differs among countries and may be allowable under different conditions. In Malaysia for example, a grace period of 12 months from the date of disclosure is available, in accordance with Section 14(3) of the Malaysia Patents Act. This means that a disclosure made within a period of 12 months preceding the filing date of a patent application shall not be considered as part of prior art and therefore, will not destroy the novelty of the patent application, provided if:
- Such disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title; or
- Such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title.
Drawbacks of Relying on Grace Period
Although it is possible to file a patent application within the grace period, it is not recommended to rely on the provision of grace period since some countries do not have such provision, and even if the provision is available, the condition differs from country to country. This means that even if a patent application is filed in Malaysia before the end of the grace period, a corresponding United Kingdom application claiming priority from the Malaysian application may be rejected due to the lack of novelty, since at present, the UK only has a limited and conditional grace period provision.
Our Recommendation
Novelty is not the only requirement for an invention to be granted a patent, however, do keep in mind that disclosing an invention before filing a patent application will risk the inventors’ opportunity to obtain a patent due to lack of novelty. Therefore, to minimize the risk of losing out on the chance of obtaining patent protection, it is highly recommended to initiate the filing of a patent application as soon as possible, before an invention is disclosed to the public. Keeping an invention confidential prior to filing a patent application is absolutely essential. Any pre-filing disclosure (e.g., for test-marketing, to investors or other business partners) should take place only after signing a confidentiality or non-disclosure agreement.
Generally, we recommend applying for patent protection as soon as you have all the technical information and supporting data required for us to conduct a patentability search and subsequently draft the application. Other advantages to filing early include:
- Most countries grant patents on a first-to-file basis.
- Facilitates the process of applying financial support, government grant or licensing your invention.
- In most cases, the sooner your application will be examined and granted.
If you would like to seek patent protection in Malaysia and in any countries of interest, you may contact any of our patent practitioners for further discussion and detailed advice/strategy.
This article is for your general information only. Its content is not a statement of the law and does not constitute advice. For further information, please contact IP SENSE Sdn. Bhd.