[Patent Talk] Can You Still Obtain a Patent If You Disclosed Your Invention Before Filing?

This is a column by our patent attorney Taeyoung Lee, published in Etoday on November 10, 2020. It discusses whether a patent can still be obtained when an invention has been disclosed before the patent application is filed, and the filing strategy that follows from this.

[Patent Talk] Can You Still Obtain a Patent If You Disclosed Your Invention Before Filing?

Article 29(1) of the Patent Act provides that an invention disclosed before a patent application is filed cannot be patented for lack of novelty, and Article 29(2) provides that an invention that a person of ordinary skill in the art could easily have made based on an invention disclosed before filing cannot be patented for lack of inventive step. As a rule, therefore, even an invention you developed yourself cannot be patented if you disclosed it before filing.

However, Article 30 of the Patent Act provides that, where applicants disclose their own invention and file an application within one year of the disclosure date, the disclosure is treated as not falling under Article 29(1) or (2), so that a patent may still be obtained. To benefit from Article 30, the applicant must state a claim of the exception to loss of novelty (grace period) when filing the application and submit supporting documents within 30 days of the filing date.

It is important to note, however, that a grace-period claim under Article 30 only means that the application will not be rejected for lack of novelty or inventive step over the applicant's own disclosure; the filing date itself is not backdated to the disclosure date. Because the filing date is not backdated, if a third party files an application for the same invention between the disclosure date and the filing date of the grace-period application, the application may be rejected for violating the first-to-file requirement of Article 36.

The calculation becomes even more complicated once foreign filings are taken into account. Korea and the United States, regardless of the reason for the disclosure...

(For the full column, please click the link below.)

LNB IP Law Firm