Is our own patent application, which is filed in grace period, consider as grace period disclousure?


I filled two application 3 month apart and the first application is published before the second one's application date. My first application is classifed as "X" in the search report of the second application.

In my country (Turkey), we have 12 month grace period for both patentebility criteria. However, patent office says applications doesn't consider as disclosure of patent owner/inventor. An officer i talked says that patent office did the disclosure, not the patent owner/inventor. The patent law just says "disclousure of the owner/inventor in 12 months doesn't effect of patentebility" and it doesn't specify type of the disclousure.

When I did little research, I found out applications are considered as disclosure in many country and also many of the offices doesn't specify type of the disclosure for grace period.

Thanks your helps already.

Best regards.

Ali Şimşek

Posted 2020-06-25T09:09:06.097

Reputation: 37

Which patent office(s) did you file in? Did you file both at the USPTO and at the Turkish Patent Office? Did you file an international application under PCT (patent cooperation treaty) with WIPO? Or for an European patent with EPO? – EA Kretzmer – 2020-06-25T10:19:14.133

No, both applications are filled in Turkish Patent Office. – Ali Şimşek – 2020-06-25T10:21:06.017

OK, thanks. I edited my comment, and am wondering whether you filed in any other offices? – EA Kretzmer – 2020-06-25T10:23:47.663

Are you looking for an answer with respect to Turkish Patent Office rules, or a different patent office? – EA Kretzmer – 2020-06-25T10:25:20.187

Both are filled applications for Turkish Patent Office. There is no international application. I'm looking for answer for Turkish Patent Office. Actually, i'll go for Re-examination division of Turkish Patent Office (office section for controversial subjects) to prove earlier application should consider as grace period disclousure and i need to know other countries' approach about this subject for building up strong case. – Ali Şimşek – 2020-06-25T10:35:33.267

Does the second application claim priority from the first application? – George White – 2020-06-25T18:26:41.537

I do not understand the logic but according to this site the office's publication of your application only starts a grace period if it was published in error.

– George White – 2020-06-25T18:39:39.180

The first application does not claim priority from the first one. In that site, cited law section says disclosure by inventor doesnt effect patentability if disclousure is made in previous 12 month. Is earlier application consider as a disclosure by inventor? If it is yes, earlier application (first application) shouldn't be in second one's search report. – Ali Şimşek – 2020-06-25T20:41:43.963



From a web site of a practitioner of Turkish patent law the grace period starts when a disclosure is made by

a) By the inventor.

b By an authority to which the patent application was filed and the information was contained in 1 another application filed by the inventor which application should not have been disclosed by the respective office or [2] . . . .

There other exceptions that do not fit your case.

If this is the law, then a proper publication of your first application by the Turkish office does not start the grace period.

While that does seem illogical to me, you will not get anywhere arguing that it should not be the law or that other countries do it differently. Is it too late for the second application to claim priority from the first application under Turkish practice?

George White

Posted 2020-06-25T09:09:06.097

Reputation: 21 648

I understand your logic based on exceptions given in b. However, i don't really understand how the application filled by inventor doesn't consider as disclosure by inventor. By the way, it is late for claiming priority. Actually the first application is not too much problem for my second one however i really would like to understand logic behind this situation.. – Ali Şimşek – 2020-06-26T09:34:15.440

Disclosure means making available to the public. Grace rules are designed to not penalize you for publishing an article that the public sees before you file. A grace period starts when you put something out for all to see. The office publishing your application is not consider you putting it out to the public. Laws do not need to follow your logic. – George White – 2020-06-26T20:58:51.800

Unnecessary harshness. I just try to understand why. I know, law doesnt need to follow my logic but sure it needs to follow some logic which is not just accept what it is. – Ali Şimşek – 2020-06-27T22:18:32.147

I'm sorry, I did not intend to be harsh at all. In U.S. practice, sometimes "and" means "or". Sometimes, "at least one" doesn't cover the case of exactly one. In the U.S. the published application could not be used against the second application unless it had different ownership or the co-inventor of the published application who contributed the specific material was not also an inventor on the second application. The Turkish rule at least has the benefit of simplicity compared with that. – George White – 2020-06-27T23:16:10.863