Patent Grace Period Considerations in Australia, Japan, South East Asia and the U.S.

In this podcast, we discuss the similarities and differences in the application of the patent grace period in various jurisdictions, and provide examples and hypotheticals about when the grace period can be applied, as well as situations in which it cannot be applied. We cover the timing, scope of included activities, parties covered and exceptions, as well as the procedural requirements. We also cycle through a set of fact patterns with some nuances and variations, and discuss the differences in how the grace period can be applied in each situation. Our conversation concludes with some practical considerations for applicants considering filing in the various jurisdictions in question.

• Miku Mehta, Partner and Asia Pacific group leader, Procopio
• Tracey Hendy, Principal, FPA Patent Attorneys
• Desmond Tan, Principal, FPA Patent Attorneys Asia
• Shimpei Kuroda, Senior Manager, Shiga International Patent Office

Click below on “VIEW PDF” to read the transcript or “PLAY NOW” to hear the podcast.

Highlights:

• 2:13 – grace period definitions by location
• 4:58 – how grace periods differ by location
• 8:58 – unintentional third-party disclosure
• 11:01 – claiming a grace period
• 13:04 – experimental grace periods
• 19:38 – summary of differences and similarities
• 28:01 – grace periods for designs
• 29:48 – how a hypothetical case compares across jurisdictions
• 38:50 – takeaways and steps to take