From our experience, we have almost always seen the entrepreneurs and the inventors confronting this question - Whether they should publish (Sell/Market/Exhibit) first or file patent application first?
The answer to this question is not straightforward for it depends on the jurisdiction or the country of filing the application, and also on the countries, where in future, one wishes to file the same application. This is so because different countries treat prior disclosure of the same invention by same applicant/inventor differently. Some countries are known to give what is called as - grace period, while some are strictly against allowing such lapse, and impress upon filing patent application first, before making any publication, otherwise one's own public disclosure is cited against the patent application the one has filed.
The grace period is the time period within which the applicant/inventor should file patent application from their own public disclosure to fulfill the criteria of novelty, else their own publication is cited against their patent application to deny them the patent.
As a rule of thumb, if an entrepreneur and/ inventor plans to go global in future, we highly recommend filing patent application first. If the entrepreneur and inventor decides to confine their patent application in one or just a few more countries, then the answer depend on the local law of each country that inventor/entrepreneur has decided to pursue for patent.
Below is the list of grace periods that are allowed and the corresponding countries that allow those grace periods.
1. 12 month grace period
Australia, South Korea, Malaysia, Canada, United States of America, Philippines, Singapore, Thailand, Ukraine
2. 6 month grace period
Eurasia, Japan, Russia, Indonesia, Vietnam
3. No grace period
India, Europe [EPO], China
So, if you happen to publish your product flyer in Malaysia, Malaysian Patent Office will not consider the product flyer/brochure as anticipating, if the patent application is filed within 12 months. However, if you file that application in India, Europe or China, your own marketing flyer/brochure may be considered as anticipating your patent application based on the amount of disclosure in the flyer/brochure, and you may end up receiving no patent at all in these countries.
Next time, if and when you are confronted with the choice between filing and publishing first, you have a reference here helping you out!
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with our expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact us @ email@example.com
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