by Amey Kokare (Patent Associate)
My missing Patent: Patent Filing Post-Publication
Forgetting to patent an idea can be a challenging situation, but all is not lost.
Inventors often make the mistake of revealing their inventions to the public by publishing scholarly articles or presentations, or by using the invention in public before filing for a patent, which ends up “anticipating” the invention and ending up as formidable prior art!
In ‘first to file’ jurisdictions like India where timing is paramount, a ‘grace period’ of 12 months allows inventors to protect their inventions and take advantage of opportunities even after revealing the invention publicly.
Significantly, on March 15, 2024, the Indian Patent Office (IPO) brought in new amendments to the Rules, by statutorily introducing Rule 29A and Form 31 for filing a patent under the grace period provision to combat such eventualities.
What exactly is Grace Period?
A grace period is a specific time frame during which an inventor can publicly disclose their invention (such as in writing, by speaking, using or exhibiting, etc.) without losing the right to file a patent application. Thus, the inventor is protected from his own accidental or necessary disclosure from turning into a novelty destroying prior art and the invention can still be considered new and novel. In fact, this leeway or breathing time prior to filing the patent application allows inventors get a pulse – to test the market, seek funding, or gather feedback before formally applying for a patent.
Grace periods are decided by prevailing national laws of countries and periods of some territories have been tabulated below.
| Jurisdiction | Grace Period |
| United States of America (US), Japan (JP), South Korea (KR), Canada (CA), Australia (AU), Philippines (PH), Singapore (SG), India (IN), Cooperation Council for the Arab States of the Gulf* (GCC) | 12 months |
| European Patent Organisation (EPO), Eurasia (EA), Russian Federation (RU), China (CN), Cooperation Council for the Arab States of the Gulf** (GCC) | 6 months |
*Abusive actions of others against the applicant or his predecessor in title within 12 months before the filing date
**Display of the invention at an officially recognized exhibition within 6 months before the filing date
Likewise, specific conditions and requirements that must be met to qualify for an exception against prior publication or display of the invention are also defined territory-wise.
In India, the newly added Rule 29A (recitation shown below) now segregates and formalises patent filings within the grace period thus providing a more defined path for innovators in this time race.
“29A. Grace period. – An application to avail the period specified under section 31 shall be filed in Form 31, along with the fees specified in the First Schedule.”
Further, Rule 29A specifies filing of Form 31 as an exception to anticipation under section 31 of the Act. The requisites for such filing have been detailed through this article.
General process for obtaining a patent grant:
The procedure to secure a patent grant necessitates fulfilment of the statutory patentability prongs of novelty, inventive step and industrial applicability that are ascertained by the patent examiner during the examination process, subject to which, the patent may be granted or rejected.
Subsequent to filing the patent application and a request for examination, a patent examiner conducts a worldwide prior art search for determining if the invention has been publicly disclosed by any previous publication and prior claiming under section 13 of the Patent Act, 1970.
Frequently, plausibly due to lack of adequate guidance or knowledge, inventors themselves tend to disclose the invention to public which anticipates the invention and is assertable by the examiner as prior art. While ‘anticipation’ is defined under sections 29-32 of the Patents Act, 1970, section 31 details ‘exceptions to’ or what would not constitute anticipation.
Exceptions to Anticipation under Section 31:
Section 31 of the Patents Act, 1970 sets forth the exceptions to the anticipation by public display, etc. as follows (emphasis added):
- The display of the invention with the consent of the inventor/assignee at an industrial or other exhibition by notification in the Official Gazette by central government, or the use thereof with consent of inventor/assignee for the purpose of such an exhibition.
- The publication of any description of the invention in consequence of the display or use of the invention at any such exhibition as aforesaid.
- The use of the invention, after it has been displayed or used at any such exhibition as aforesaid and during the period of the exhibition, by any person without the consent of the true and first inventor or a person deriving title from him.
- The description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society.
Breakdown of terminologies for deciphering the scope of anticipations provided in the Patent Law, 1970:
| Anticipation by | Relevant Section | Examples of Anticipation |
| Previous Publication or public knowledge | Section 29 | Public disclosure of the invention in a journal, magazine, website, conference proceedings, thesis, or any other form of publication accessible to the public research paper describing the invention that is published before the patent application |
| Communication to Government | Section 30 | Communication to the government or government officials regarding clinical trials, human trials or investigation of the invention in consequence of the statutes |
| Disclosure and use after Provisional Specification | Section 33 | A provisional application can be filed when an invention is still in the experimental stage. By filing a provisional specification, inventors gain the advantage of establishing a priority date for their invention. Additionally, they have a 12-month period to fully develop the invention, evaluate its market potential, and subsequently submit a complete specification. Importantly, any use of the invention after filing the provisional does not count as anticipation. |
| Prior Display or Presentation | Section 31 | Presentations at conferences, trade shows, seminars, or lectures. Includes any slides, handouts, or abstracts that were made publicly available. Journal publication, conference proceedings or papers, YouTube talks, conference papers etc. |
| Public Working/use | Section 32 | Publicly used or demonstrated before the filing date—such as in a demonstration to potential customers, in a public setting, or at an exhibition. For example, before applying in a public setting, inventions related to drainage lines must undergo testing to ensure their effectiveness and reliability. |
| Prior claiming | Section 13 | Any invention with an earlier priority date earlier is considered prior art, including patent applications, granted patents and patents with hidden priority. Claims mentioned in complete specification are considered for prior claiming. |
Sections in this table correspond with The Patents Act of India, 1970
However, another consideration is what might constitute as ‘relevant disclosure’ for the purpose of obtaining a patent. This is because some details or aspects that could inherently anticipate the invention may not have been covered in the publication and thus should be explored for patent protection. These details may entail seemingly less pronounced experimental components or pieces of information, along with their specific mode of operation/exact manner of working which may not have been explicitly mentioned/pointed to in the publication. Consequently, this may not be able to lead a skilled person to arrive at the claimed invention. All such possibilities can be further investigated. Therefore, even after publication, opportunities for patenting should not be dismissed if the invention appears to have commercial potential. SJP’s team of legal and technological experts has effectively shown their ability to analyze data in order to uncover important innovations.
Thus, provisions of the newly introduced Rule 29A which delineates the exceptions to anticipation per filing a separate Form 31 are assertable post-publication by the applicant under section 31 of the Act.
Rule 29A and Form 31: An inventor’s delight for rectifying missed patent filings
Before the 2024 amendments, the grace period for availing exceptions related to public display was unstated – broadly understood as 12 months in some instances and undefined in others. Moreover, its assertion lacked a statutory framework.
Another aspect may involve an easy categorisation of applications at the IPO and further record keeping. For inventors/applicants, it provides a defined path for securing priority in case of any prior public disclosure which is now specified and unambiguous, making the patenting process transparent, attractive and accessible to inventors even in case of self-filing. The newly introduced provisions serve to bridge the gap between the earliest ‘first to use’ or ‘earliest inventor’ principle and the present ‘first to file’ regulations.
The table below reiterates and further lists prominent requirements pertaining to filling of Form 31 along with the fees that are payable as:
| Rule applied | 29A of The Patents Rules, 2003 | ||
| Exceptions/who may apply | S. 31 of the Patents Act (true and first inventor/assignee/legal representative within 12 months from disclosure) | ||
| Grace period | Maximum 12 months | ||
| Required Personal details | Name, address, nationality, and application number | ||
| Fees | Payment mode | Natural Person | Other than Natural Person |
| e-filing | INR 500/- | INR 2500/- | |
| physical filing | INR 550/- | INR 2750/- | |
Further, support documents that are required to be provided along with Form 31 are:
- Document providing description of the invention in a paper read by the true and first inventor before a learned society.
- Document providing the invention published by the true and first inventor or with his consent in the transactions of a learned society.
- Documentary evidence or affidavit that the use of the invention occurred without the consent of the true and first inventor or a person deriving title from him
- Documentary or Affidavit stating that the use/display was done without the true and first inventor’s consent.
- Notification by Central Government in the Official Gazette to which the provisions of this section have been extended for display occurred at an industrial or other exhibition.
- Evidence may also include an affidavit.
- Undertaking regarding that invention was in the public domain on the date XYZ and this application is made not later than 12 months from that date as stated above in respect of section 31(a), 31(b), 31(c), or 31(d).
This amendment is a significant leap towards promoting procedural clarity and transparency to inventors and in the administrative machinery alike. These changes would also help establish clear records of relevant dates, thereby reducing inconvenience and enhancing clarity in patent proceedings.
