Drafting For Multiple Jurisdictions Miniseries: Part 1 - Grace Period Provisions

Many patent owners are interested in trying to draft a single patent application that will serve them in several countries. This is ambitious, since there are many differences between various countries' patent systems, but perhaps not impossible. The patent drafter just needs to be aware of and try to balance all the different requirements in the single patent application. This series of articles will outline some important considerations when drafting a single patent application.

In this first article, we will review the grace period provisions in the U.S., Korea, China, and the European Patent Office (“EPO”). It is a requirement in all jurisdictions that a patent may only be granted if an invention is new (i.e. is not disclosed in the prior art before the filing date or, if priority is claimed, before the priority date). Certain countries, however, allow “grace periods” for inventor disclosures, meaning that such disclosures do not form part of the prior art. Grace