For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 14 January 2014

Grace periods: waving the flag and pre-filing disclosure

One of the IPKat's posts late last year, "Grace periods for patents: a call from ALLEA" (17 December, here) attracted a little flurry of interest at the time, but was over taken by events -- two events, to be precise, Christmas and the New Year.  The candle of interest, once kindled, did however continue to flicker in the ever-creative mind of veteran patent attorney Richard Gallafent (Gallafents LLP), who offers us the following illuminating contribution to the great grace period debate:

Reading the 17th December posting in connection with grace periods and the statement adopted by ALLEA, I am prompted to table yet again a proposal which I believe solves the vexed question of declaration, where I believe there are still vigorously opposed camps.

The ALLEA conclusions come down firmly in favour of a requirement, if a grace period is ever to be usable in a given case, of making a declaration at the filing date, but I believe it goes too far in requiring that declaration to indicate “pre-filing disclosures, which should be submitted to the Patent Office within a reasonable period of time following the filing of the patent application”. This is likely to be burdensome for some, and if the list of disclosures has to be seen as complete, what then is the effect of a disclosure which, for reasons of error, is simply omitted from the list? Or which is a derivative disclosure of which the applicant, at the filing date, or within whatever the specified period was, had no knowledge? If such incompleteness can be condoned, then why have a list of material at all?

My proposition is simple. If you know, at the time of filing, that there are pre-filing disclosures which would prejudice your securing a valid patent under the usual absolute novelty rules, then you should invoke the grace period and say so. No further specification should be necessary unless and until the matter comes to require decision, e.g. in opposition or invalidation proceedings or in later litigation. That restricts the general burden of identifying what the disclosures were to only those cases of interest. The rest, whether because they never get granted anyway or because they are of no practical or commercial significance, do not merit effort spent on identifying the earlier disclosures.

But there is a logical consequence of reliance upon the grace period which too is simple. If, on filing, the applicant declares that he or she wishes to invoke the grace period because there is an earlier disclosure which, as noted above, would render the patent otherwise invalid on absolute novelty grounds, then the information is already in the public domain. As such, there can be no disadvantage, since the information about the invention is in the public domain anyway, in letting the world know about the invention straight away. In other words, if you invoke the grace period, then your application should be published as soon as practicable. Nowadays, this is easily done for the majority of Offices which have online file inspection. The flag allowing online file inspection should go up as soon as the filing is on the database.

I recall that, at one stage, Inpadoc even had a publication code for the publication of the minimal detail available shortly after filing in countries such as the UK which published the name of the applicant, the application number, the filing date and the title. It was “A0”. An A0 publication for any grace period- invoking application ought to be simple.

Bartholemew always likes
to file before he discloses
Immediate publication acts, as I believe many would support, to militate against use of the grace period to delay filing. It is, of course, better and simpler to stick with the “file before you disclose “rule but sometimes, for all sorts of reasons, not least late realisation that there is a patentable invention there, a grace period is a sensible component of the numerous checks and balances built into the patent system itself -- and the desirability of a “universal” grace period coming into force at the same time for everyone is difficult to overstress, though just how this could be orchestrated is beyond my power of suggestion.
Do you agree with Richard? Does his proposal have wings? Do let us know!

10 comments:

patently said...

Yes, I'd say that's quite a good idea actually.

MaxDrei said...

First reaction: excellent suggestion.

Many in the USA champion the Grace Period because it recognises reality in the area of blue sky inventing in universities. Inventors there tend to make their subject matter available to others before they file at the Patent Office, and nothing you can do will stop them because they are in a "publish or perish" Environment. But as the future of the national economy depends on this blue sky stuff getting patent protection, the Grace Period is an imperative.

Richard's proposal gives them what they want (and so really does open up a way for the world to compromise, agree and harmonise). At the same time, it will reduce to a minimum the number of occasions on which the Grace Period is invoked. Who feels comfortable, declaring with his filing docs that he has already told the public about his invention? Not exactly a ringing declaration of validity, is it?

Anonymous said...

Why do we always have to look out for the minority? Say no to Grace Periods. Educate about First to File. If they don't get that then tough! All we do is end up dancing on the head of one or more pins to try and accommodate what is not worth accommodating. Universities provide very little worthy of patent protection and if something is worthy they can play by the same rules as the commercial sector. Heat and Kitchen! Legal certainty and simplicity is what makes the world go round.

Barbara Cookson said...

I agree with the grace period. Richard's suggestion for immediate publication is attractive but would ensure anyone relying on the grace left filing even later with other attendant risks. Doesn't the US and Community registered design experience illustrate that you can have an effective grace period without declarations and lists(which are excessively elaborate and impractical). Any declaration system requires the inventors to fess up and there is often an argument as to whether the disclosure might be considered by the recipient as in confidence anyway so listing would be fraught with difficulty. Listing also assumes that the patent applicant is prepared to make full and candid disclosure to his agent.

Anonymous said...

Whilst all the suggestions in the article are interesting, is starting our own system from scratch the best way? One of the reasons to have a grace period in Europe is that almost everyone else has one, but let's just copy the American though to keep things simple.

Anonymous said...

I find that suggestion quite interesting, though from the point of view of patent offices it would be better to have access to the date and place of the disclosure. I am completely in favour of implementing a safe net grace period in Europe. Lots of interesting patents are lots of patents are lost every year due to pre-filing disclosures by inventors or university scientists eager to publish their achievements and unaware of the consequences.

MaxDrei said...

Already the Comments thread is interesting. Barbara imagines that, under Richard's suggestion, grace period filers will delay filing. I doubt it. In any First to File jurisdiction, delay is ill-advised. Somebody else might get in first and, in a case where the Invention has already been made available to the public, that risk is much higher. So, make extra sure you yourself file before the other fellow does.

Another commenter urges we adopt the AIA scheme. I have seen much comment from the USA that it is so narrow and set-about with qualifications as to be close to useless and therefore should never be relied upon. OK, if that is the case, no great loss if we too adopt that very scheme. The Asian countries will then tailor their jurisprudence to the American/European standard and we will then have peace, quiet, harmony and world-wide less reliance on the Grace Period than at present there is in Europe on the International Exhibition novelty-saving provisions of Art 55(1)(b) of the EPC. Now isn't that an attractive outcome?

Roufousse T. Fairfly said...

Aren't there regularly calls on this blog for the implementation of policies based on evidence?

I would expect any proponent of a grace period to come up with a solid case showing how such a facility would be worth the extreme efforts required in setting it up.

Or they could at least a collection of edifying sob-stories of hapless inventors who could have become gazillionaires if they hadn't babbled about their brainchild to the wrong people at the wrong time. First-to-file without a grace period has been around for much longer than our lifetimes, so you should be able to come up with a case or two.

Art. 55 EPC is AFAIK essentially a holdover of the mid-XIXth century, in the days where industrial exhibitions (eg: Paris 1855, London 1851) were an important vehicle for disseminating technical knowledge between nations. It was discussed as a possible solution to the foreign filing problem in the germanic-dominated conferences held before the Paris Union was conceived. The idea was that you could sail from, say, Prussia or Russia to the Crystal Palace, and immediately unpack your stuff, whilst still having time to file for a British patent. A kind of safe harbour provision.

MaxDrei said...

Roufousse, the new issue of JIPLP has in it an article reporting the experience in Japan with a Grace Period. It cites the Cohen-Boyer patents as the best example of a University Invention which yielded a blockbuster patent family only because of a grace period.

So it seems there is at least one patent that people cite in justification of a Grace Period.

from my own experience, I would cite Julio Palmaz and his balloon-expandable stent. He touted it around various corporate manufacturers before filing on it. That activity stopped him getting a blockbuster patent in Europe, but not in the USA.

Dave Zethmayr said...

Full disclosure: I'm a US citizen. My beef with no-grace-period is that a small entity has to disclose to several to many potential backers in order to fund the very considerable patent filing fees and attendant legal counsel. So long as all but one of the largest markets have a no-grace rule, the practical fact of global village forces it on me as well, namely David Zethmayr, Mauston, Wisconsin, USo'A

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