IP Expert – Latin America IPR SME Helpdesk
One of the basic rules for the protection of IP rights is that in order to benefit from the monopoly granted through the registration of a patent in a given country, the invention claimed must be new. Novelty is one of the pillars of patent registration, derived from the rationale for the protection of IP: to foster innovation and encourage and compensate the efforts made by those who create. Obviously, this can only work if IP rights are granted for inventions regarded as new.
Implications of the novelty requirement
Novelty is quite a strict concept: the basic rule is that in order to be new, an invention must not have been disclosed in the past by the applicant or a third party. Except in some cases (which we will turn to later), any disclosure can, so to speak, kill the novelty of the invention. The place and way in which the disclosure is carried out is irrelevant: an article published in Germany or a technical seminar hold In Ukraine can both count as a disclosure, even in Brazil.
For this reason, researchers and innovative entrepreneurs do need to keep the technical information confidential until a patent application is filed or other type of IP protection is applied.
To illustrate the difficulties arisen by this strict novelty requirement, let us use an example: Blau GmbH, a German SME, filed a patent application with the European Patent Office (EPO) eight months ago. Once the patent application was filed, the EU SME started to make this new innovation known, for example, by using it as a selling point in its marketing material or sharing technical documents during trade fairs and talks with potential customers and partners. The EU SME now wishes to file a patent application in Mexico, Panama and Brazil, as these are promising markets for their products. Meanwhile, it also wishes to ensure their IP rights are protected. The issue at hand is that, by affecting the novelty of said invention, those disclosures may jeopardise its patentability in these three Latin American countries.
Therefore, potential applicants must be careful when setting up their IP protection strategy and take into account that, if they wish to protect an invention in several countries, they must set up an international strategy accordingly, not only considering the territoriality of IP rights, but also the timeline of IP registration. We will now turn to the existing exceptions and mechanisms which would allow Blau GmbH to still obtain patent protection in Latin America.
Permissible prior disclosures
As explained above, the requirement of novelty in patent applications is strict. Nevertheless, there are certain exceptions and caveats which may help the German SME.
EU applicants may be familiar with the exceptions (the so-called “non-prejudicial disclosures”) applied by the European Patent Office and the national legislation of most countries across Europe. The disclosure of the invention prior to the filing of the application will not necessarily “kill” the novelty of said invention, provided that:
- it occurred within the “grace period” of 6 months before the filing date;
- the disclosure was a result of a breach of confidence of a third party who had access to the relevant information but was under the obligation not to disclose it, or as part of an official international exhibition.
The grace period and permissible disclosures are much broader in Latin America. Firstly, prior disclosures within the grace period of a full year are allowed in Latin American countries. Secondly, the cases and types of non-prejudicial disclosures are much broader there than in Europe. With the notable exception of Panama, all Latin American countries deem a disclosure by the applicant or their successor in title within the above-mentioned timeframe as non-prejudicial to the novelty of the invention. Note, however, that Panama follows a much stricter, European-style approach, limiting the exemption to disclosures by third parties in breach of confidentiality.
Nevertheless, applicants should be careful if there has been a prior disclosure, since this must be notified as part of the application in certain countries. This is the case in Mexico or Argentina, for example: failure to declare a previous disclosure within the grace period will lead to the patent application being rejected for lack of novelty.
For more relevant information regarding the grace periods and previous disclosures allowed in Latin American countries and across the world, we invite you to consult WIPO’s table on grace periods.
Based on this information, we now know that Blau GmbH would still be able to file patent applications in Brazil and Mexico and count on the novelty requirement being met, though additional paperwork would be necessary in Mexico. But what about Panama?
Previous patent applications in other countries: priority right and the PCT
Fortunately, there are specific mechanisms that offer some flexibility for those wishing to file patent applications in different territories.
First of all, the right of priority allows patent holders or applicants in one country to secure a patent right for the same invention in another country, by claiming priority. This means that, when filing the second patent application, they can request the filing date of the first application to be the relevant date taken into account for the examination of novelty. Note that it is only possible to claim priority within one year from the filing of the original patent application.
Therefore, Blau GmbH can file a patent application in Panama claiming priority by stating that the assessment of the novelty of the invention claimed should be done taking into account the filing date of the first application with the EPO, eight months before. It can also claim priority while filing the application in Mexico and Brazil, and while it may not be necessary, it can still prove useful (e.g. saves from having to notify previous disclosures in Mexico as part of the application).
Lastly, when seeking patent protection internationally, the Patent Cooperation Treaty (PCT) is an extremely useful tool. This centralised application route allows to apply for patent protection in a large number of countries through one single application. An international patent application can be filed through local IP offices, or directly with WIPO, up to 12 months after the filing of the original patent application for this invention. Once the international patent application has been filed, the applicant has up to 30 months to choose which participating country it wishes to extend its patent to.
Therefore, one of the strategies that could be applied by the German SME is to file an international application through the PCT (within 12 months from the original application) and then designate the 3 countries of interest. This saves time, money and efforts. Note, however, that this tool is not available for countries that are not part of the PCT. These include Argentina and Uruguay in Latin America, for example.
Novelty is one of the pillars for patent applications. Thus, potential applicants should be particularly careful to keep all innovations confidential before any patent application is filed. There are exceptions to the novelty requirement, but they are limited both conceptually and in time. It is of paramount importance that EU SMEs wishing to internationalise make sure that they respect the deadlines and specific rules and limitations applicable to the grace periods, priority rights and PCT filings. In order to avoid bad surprises, one can therefore not stress enough the importance for companies to put an IP strategy in place considering the territoriality of IP rights, the timeline of IP filings and the national or regional legal specificities.
 Note, however, that a recent decision by the Court of the Andean Community has put this general principle in doubt for said region (which covers Colombia, Peru, Ecuador and Bolivia), claiming that this one-year long period can only be applied to “accidental” disclosures. It must be noted that this particular decision went against the general direction and it remains to be seen if this specific rule will resist the test of time.