Currently there are two ways of gaining patent protection in the UK. You can either file a UK patent application or a European patent application. Both systems require that the patentable subject matter is new and inventive. This means that if an inventor has publically disclosed their invention prior to filing a patent application then they are barred from subsequently seeking valid protection for it.
The UK government recently announced its intention to join the CPTPP trade group which includes countries such as Japan, Canada, Australia and New Zealand. This would encourage free trade between those countries and the UK. Of interest is that the CPTPP requires that signatory countries provide a 12-month grace period for disclosures by an applicant in which a patent application can still be filed. This would mean that if an inventor or applicant discloses their invention they can then subsequently file a patent application within 12 months of that disclosure. The applicants own disclosure does not form prior art against the new patent application. This would also bring the UK into line with US law on this point.
This could have a radical effect for applicants. Any UK patent attorney will be able to tell stories of potentially promising ideas and inventions that have been publically disclosed prior to filing and so prohibited from gaining patent protection. The use of a grace period would mean that protection of these inventions would not be lost.
It would still be advantageous to file applications before any public disclosure as other jurisdictions such as Europe will not have such a grace period. Moreover, the grace period would not protect applications from third party disclosures in the intervening time. Therefore, best practice would remain filing an application before it is disclosed publically. However, this potential change could offer some help to inventors and applicants who have unwittingly lost valuable IP through overzealous promotion of their ideas.
Interestingly this would only apply to UK patent applications and not European patent applications. Therefore, the two pathways for gaining UK protection would diverge significantly. This could lead to situations where patent strategy is significantly affected. For example, it may be that broader protection is available to applicants who file directly at the UK patent office if there is any risk that a disclosure has been made by the applicant. It would also mean that the European patent office may reject applications that would be valid in the UK if they were to grant. It is also not known how this may affect UK membership of the European patent convention (EPC).
Of course the UK has not yet joined the CPTPP, and may not do so. Moreover, if the UK does join the UK may ask for certain requirements to not apply, and that could include the patent grace period. However, we believe that the use of a grace period could be a positive step for UK businesses as long as it does not compromise membership of the EPC. We await any future developments.
