Authored by: Joshua P. Astin

As a foreign associate, you’ve likely encountered this scenario: your client excitedly shares news about presenting their breakthrough invention at a major conference, only to mention afterward that they haven’t filed any patent applications yet. In many jurisdictions, this disclosure would be fatal to patent prospects. Fortunately, the United States offers more forgiving rules through its grace period provisions—but understanding how these work is crucial for advising international clients effectively.

The Reality of Imperfect Timing

In an ideal world, every inventor would file patent applications before making any public disclosures. But innovation doesn’t always follow neat timelines. Researchers publish papers, entrepreneurs pitch to investors, companies demonstrate prototypes at trade shows, and startups launch products—often before comprehensive patent strategies are in place.

While most patent professionals recommend filing before any disclosure (and this remains the safest approach), the U.S. patent system acknowledges that innovation happens in the real world, not in a legal vacuum.

Understanding the U.S. Grace Period Framework

Under the America Invents Act (AIA), the United States provides a one-year grace period that can shield certain disclosures from being used as prior art against a later patent application. This is particularly valuable for international clients who may be navigating patent strategies across multiple jurisdictions with different disclosure requirements.

However, this grace period isn’t automatic—it operates under specific conditions that require careful analysis.

The Two Key Conditions for Grace Period Protection

The AIA grace period applies when either of these conditions is met:

Condition 1: Direct Inventor Disclosure The disclosure was made by the inventor, joint inventor, or someone who obtained the subject matter directly or indirectly from the inventor.

Example: Your client’s CTO presents the invention at a technical conference. As long as a patent application is filed within one year of this presentation, the disclosure won’t count as prior art against their application.

Condition 2: Prior Inventor Disclosure The subject matter had already been publicly disclosed by the inventor (or someone who obtained it from the inventor) before the potentially problematic disclosure.

Example: Your client publishes a research paper in January. In March, a third party independently publishes similar work. Your client’s January publication protects against the March publication being used as prior art, provided they file within one year of their original disclosure.

Beyond Basic Disclosure: Third-Party Actions

Here’s where the U.S. grace period becomes particularly powerful for international clients: it can also protect against certain third-party disclosures that occur after the inventor’s initial disclosure.

Practical Scenario:

January: Your client discloses their invention at a trade show
March: A competitor sees the presentation and begins selling a similar product
June: Your client files a patent application
Under U.S. law, neither the original trade show presentation nor the competitor’s subsequent sales would count as prior art against your client’s patent application, assuming the filing occurs within one year of the original disclosure.

International Context: Not All Grace Periods Are Created Equal

Understanding how the U.S. grace period compares to other jurisdictions is crucial for developing global patent strategies:

No Grace Period Jurisdictions: Many countries, including several European nations, offer no grace period protection. Any public disclosure before filing can be fatal to patent prospects.

Limited Grace Periods: Some jurisdictions provide narrow grace periods that apply only to:

Disclosures at official exhibitions
Disclosures resulting from breach of confidence
Specific types of academic publications

Broad Grace Periods: The U.S. model is among the more generous, covering a wide range of disclosure scenarios for a full year.

Strategic Implications for International Practice

When advising clients with international patent ambitions, consider these strategic points:

Priority Filing Strategy: Even with U.S. grace period protection, filing in non-grace period jurisdictions first may be necessary to preserve global rights.

Disclosure Timing: If disclosure is inevitable, coordinate timing to maximize the benefit of available grace periods while minimizing harm in strict jurisdictions.

Documentation: Maintain detailed records of who made disclosures, when, and how, as this affects grace period eligibility.

Portfolio Coordination: Different inventors and joint inventors may have different disclosure histories, affecting grace period availability across related applications.

Practical Limitations and Considerations

While the U.S. grace period provides valuable flexibility, it’s not without limitations:

Sufficiency of Disclosure: Even outside the grace period, a disclosure might not preclude patentability if it doesn’t provide sufficient detail for a skilled person to make or use the invention.

Best Mode and Enablement: The disclosure that triggers grace period consideration may also affect other patent requirements like best mode and enablement.

Prosecution Strategy: Relying on grace period protection may complicate prosecution if the USPTO examiner questions the relationship between disclosed and claimed subject matter.

Evolving Landscape: Grace period rules can change, making it essential to verify current requirements for each jurisdiction.

Best Practices for International Practitioners

When working with clients who have made or may make disclosures:

Early Assessment: Immediately evaluate disclosure history when a client engages your services
Documentation: Create detailed timelines of all disclosures, identifying who made them and under what circumstances
Jurisdiction Mapping: Analyze grace period availability across target filing jurisdictions
Strategic Filing: Consider filing strategies that optimize grace period benefits while preserving global rights
Client Education: Help clients understand the implications of disclosure timing for their patent strategies

When Grace Periods Don’t Save the Day

Remember that grace periods aren’t cure-alls. They don’t help with:

Independent third-party inventions that predate your client’s disclosure
Prior art that existed before your client’s invention
Statutory bars in jurisdictions without applicable grace periods

Conclusion: Turning Legal Knowledge into Strategic Advantage

Understanding U.S. grace period provisions allows international practitioners to provide more nuanced, strategic advice to clients navigating the complex world of global patent protection. While the safest approach remains filing before disclosure, knowing how grace periods work enables you to help clients recover from suboptimal timing and develop more realistic patent strategies.

The key is viewing grace periods not as primary strategies, but as valuable safety nets that can preserve patent rights when disclosure timing doesn’t align with ideal legal practices.

Experienced U.S. Patent Guidance for Your International Clients

Navigating U.S. patent grace periods requires deep understanding of both the legal framework and practical prosecution strategies. If you’re seeking experienced U.S. counsel to help your international clients maximize their patent protection while managing disclosure challenges, Woodard Emhardt brings the expertise and international perspective needed for successful patent strategies.

We understand the unique challenges facing international clients and work collaboratively with foreign counsel to develop effective patent solutions. Contact us to discuss how we can support your clients’ U.S. patent objectives, whether they’re dealing with disclosure issues or planning comprehensive patent strategies.