Disclosing Before Filing: The “Grace Period” Between Lifeline and Minefield

Disclosing Before Filing: The “Grace Period” Between Lifeline and Minefield

In the world of patents, there is an almost religious dogma: absolute novelty. Under this principle, for an invention to be patentable it must never have been made public in any way — whether through a scientific article, a social media post, or even a trade fair — before the patent application filing date.

However, to err is human. A researcher’s enthusiasm or the commercial need to present a prototype can sometimes outweigh legal caution.

What happens if an invention is disclosed “too early”? Is everything lost?

The answer is: it depends on where you are. Welcome to the complex world of the Grace Period.

The Novelty Requirement: An (Often) Unbreakable Pillar

For the European Patent Office (EPO) and for Italy, novelty is an objective and absolute requirement. Anything made available to the public before filing destroys patentability. It is a strict rule designed to provide legal certainty for third parties: if a technology is public, anyone should be free to use it without fear of future claims.

But not the entire world sees it this way.

The Grace Period: Three Global Approaches

Some jurisdictions recognize that the “sin” of pre-disclosure may deserve a chance at redemption. While the Grace Period landscape is highly diverse — as illustrated in the detailed comparative overview provided by the World Intellectual Property Organization (WIPO), which is a useful resource for those wishing to explore the specificities of individual jurisdictions — it can broadly be grouped into three macro-categories.

1. The “North American” Model (USA, Canada)

In the United States and Canada, the Grace Period is seen as an inventor’s right. If the inventor (or someone who obtained the information from the inventor) discloses the invention, they have 12 months to file a patent application. During this time, their own disclosure does not destroy the novelty of their patent.

Moreover, third-party disclosures deriving from the inventor’s initial disclosure are also excluded from the prior art.

2. The “Pacific” Model (Australia, Japan, South Korea)

In Australia, Japan, and South Korea, a Grace Period exists (12 months for Japan and South Korea; 6 or 12 months for Australia), but it is often limited to specific cases and subject to formal requirements.

For example, a declaration must be filed at the time of application indicating which disclosures are to be “graced.” Furthermore, in these countries, the Grace Period does not protect against independent third-party disclosures. In short, it is a safety net, but not a license for carelessness.

3. The “Conservative” Model (Europe, China, India)

Europe (through the EPO), as well as countries such as China and India, provide an extremely narrow Grace Period. Generally, the “grace” applies only in two situations:

1. Evident abuse against the applicant (e.g., industrial espionage or breach of a confidentiality agreement);
2. Display at officially recognized international exhibitions (rare and highly specific events).

Outside these cases, pre-disclosure in these jurisdictions is typically fatal.

The “San Marino Loophole”: A Gateway to the Italian Market

There is an interesting legal anomaly that every company or individual interested in obtaining patent protection in Italy should be aware of. The Republic of San Marino provides for a 6-month Grace Period for disclosures made by the inventor.

Why does this matter?

Thanks to the historic 1939 Convention of Friendship and Good Neighborliness between Italy and San Marino, patents granted in San Marino can be validated and enforced in Italy. If someone has accidentally disclosed an invention, they can no longer obtain a valid Italian patent. However, they may file a patent application in San Marino, take advantage of the Grace Period, and then — at least in theory — enforce their San Marino patent on the Italian territory.

This is a complex strategy that must be handled with extreme caution, but it may represent a valuable last resort.

Strategic Considerations: Advantages and Pitfalls

Where available, the Grace Period is undoubtedly an opportunity. It protects companies from overzealous employees or information leaks, allows researchers to publish in scientific journals without immediately forfeiting commercial exploitation, and enables businesses to test market interest or seek investors by "openly" presenting a product before bearing the costs of a global patent strategy.

However, the Grace Period is not a panacea.

If universally extended without strict rules, it would create significant legal uncertainty. Imagine a company that sees a product on the market, checks that it is not patented and invests in its production, only to find out that a patent application claiming the very same product was filed after the product appeared on the market.

Furthermore, Freedom-to-Operate analyses, which are designed to verify that a product can be placed on the market without the risk of counterfeiting, would also become far more complex, costly and uncertain.

The lack of international harmonization on this issue is, more generally, a major problem. In the face of global trade, fragmented patent regulations make patent portfolios uneven and often create potential traps for companies operating across multiple markets.

Conclusions

The Grace Period is like an emergency parachute: it is vital when the plane is on fire, but it is equally crucial to ensure that it works in every country where you intend to land.

To stay on the safe side, our recommendation remains unchanged: maintain strict confidentiality until the patent application is filed.

That said, if the “damage” has already been done, the Grace Period — within the limits provided by the various jurisdictions — can serve as an important tool to mitigate the consequences.

Our firm is of course available to assess specific cases and provide prompt assistance should issues arise from pre-disclosure, identifying the best remedial strategies still available at both national and international level.