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Wednesday, 20 January 2016

Time for a harmonised grace period, says FICPI

The debate over whether there should be a harmonised international grace period, allowing limited disclosure or commercialisation of an invention before filing a patent application, has rumbled along for many years. Attempts to reach agreement have never got very far, given that Europe and the USA have historically regarded their own (very different) approaches to this subject with something bordering on religious dogma. European legislators have long believed that absolute novelty and third party certainty are sacrosanct, while the USA has equally zealously protected the right of an inventor to disclose an invention without losing the right to a patent.

In recent years some softening of positions is detectable: The America Invents Act diluted the US grace period somewhat, while in Europe some influential groups have suggested that the sky might not in fact fall down if a grace period were to be permitted.

FICPI, the International Federation of Intellectual Property Practitioners, is making a concerted effort to reignite this debate, and is urging that authorities reconsider the issue and make provision for a harmonised 12 month "safety net" form of grace period across all major jurisdictions. 

In a paper setting out FICPI's argument, the authors (Robert Watson (GB), Jérôme Collin (FR), Ivan Ahlert (BR), Philip Mendes da Costa (CA), Michael Caine (AU), Jan Modin (SE) and James Pooley (US)) argue that the supposed disadvantages of the grace period, primarily that it would create too much uncertainty for industry, are not borne out by empirical evidence. The paper can be read in full here.

FICPI notes that several studies conducted on behalf of the EPO, either alone or in conjunction with other major IP offices, have given at least a guarded welcome to the notion of a limited grace period covering the inventor's own disclosures (as opposed to a blanket exemption to also cover third-party disclosures in the preceding 12 months).

Providing relief to inventors who have made an honest mistake is a natural and important part of any patent system that seeks to encourage innovation from all sources. Indeed, continuing to maintain the requirement of absolute novelty risks reinforcing public cynicism about the law, because users may see it as promoting only the convenience and opportunism of large corporations who can effectively mitigate their own risk of losing rights by inadvertent disclosure, while benefiting from the mistaken disclosures by smaller entities. Whether or not this is true is not the point; rather, it is the perception of this asymmetric situation that matters. 

In response to the fundamental fairness of a grace period and the unequal effects of the status quo, the classic argument about legal certainty is insufficient. It is an abstraction that fails to account for the very substantial uncertainty that already exists, independently of whether a grace period is provided, in any patent search. No empirical evidence has demonstrated that a grace period creates any significant incremental uncertainty. And the abstract concern stands in stark contrast to the clear and existential harm to innocent inventors, who can lose all their rights.

Under this model, third parties would be entitled to retain any intervening rights, which should encourage inventors to continue to file early, and emphasising the "safety net" character of the grace period (i.e. so that it does not encourage delay in filing).

On the question of whether the inventor would be required to make a declaration covering any pre-filing disclosures, the FICPI authors urge against this, noting that such a requirement: 

"would put the inventor at risk of an insufficient statement. The declaration would become the focus of inquiry: did the inventor think of everything that might destroy novelty? If an argument can be made that he has missed something, then the risk remains that he will be stripped of his invention. In this regard, the declaration would provide very little benefit while setting a trap for the unwary inventor."

They conclude with a call for action as follows:

Consequently, FICPI urges the relevant authorities to come to an agreement, at the earliest possible time, on the institution of a global grace period of the “safety net” type, measured from the filing date or the priority date for a period of twelve months, without any requirement for an inventor declaration.


The IPKat, who senses that the time is ripe for change in this area, particularly in Europe, will be watching this topic with great interest.

25 comments:

Leo Steenbeek said...

If you quote, you should quote fairly. The EPO’s Economic and
Scientific Advisory Board's recommendation was much more detailed, and clearly not supportive of the liberal approach now advocated by FICPI. Their statement at http://documents.epo.org/projects/babylon/eponet.nsf/0/c4a001f6453f3d48c1257e0b0034cb2b/$FILE/esab_statement_grace_period_en.pdf says in its recommendation on its page 6:
"A safety-net grace period would be defined by the following features:
– Duration: at most six months, calculated from the priority date.
– Mandatory declaration requirement: mandatory list of disclosures specifying when, how and which information about the invention was made available to the public.
– Prior user rights: a third party acting in good faith should have the right to continue using an invention, provided such use or serious and effective preparations to use the invention began before the filing or priority date of the patent application.
– Protection from disclosure of independent inventions: the grace period would only apply to disclosures of the applicant’s invention, and not to independent disclosures made by third parties."

Kant said...

I would have thought that there are more pressing reforms to the patent system which could be introduced to address the "asymmetry". How about having an annuity system which kicks in only after the patent is granted? An SME or inventor/applicant typically has to pay thousands in renewal fees before they know whether their invention is patentable or not whereas a large company can spread the costs across its portfolio. Another area of concern might be the strict added subject matter / right to priority test implemented at the EPO which could be considered to unfairly penalise those not overly familiar with the system.

MaxDrei said...

I suspect that what is driving the push for a Grace Period is the debate in the USA following the introduction in the AIA of a First to Publish (oops, sorry, First to File) System.

The "interested circles" have worked out by now that it is foolish to rely on the AIA Grace Period. They have convinced themselves that only very few Applicants are going to invoke the AIA Grace Period. Anybody of intelligence will file first at the USPTO before telling anybody else, with or without a statutory Grace Period.

Given that Asia and the Americas already have a Grace Period, in the context of the quest for world-wide harmony silly for Europe to make a red line and a solitary hold-out with its No Grace Period stance.

THE US anon said...

MaxDrei says "silly" and it is he that is silly as he forgets that patent law is sovereign law and there is (still) no "One World Order."

Just because patent law can be made universally the same does NOT mean that doing so is imperative and NOT doing so is "silly."

What is silly is merely assuming the conclusion that one set of patent law world wide is some sort of de facto desired end state across the board and for all facets of patent law.

We could do less with the assumptions and name-calling based on those assumptions.

MaxDrei said...

For the record though, I do not agree with the content of the four page FICPI Paper written by America's Jim Pooley et al. and I think that the eminent patent academic Joseph Straus:

https://en.wikipedia.org/wiki/Joseph_Straus

also has it wrong. His background is civil law Germany, with German-on-German patent litigation, in which rules of evidence do not play the prominent role they do in adversarial English law countries. Inject Grace Period complexity into trans-national patent validity disputes and, Prof Straus, watch the complexity of the caselaw, and the cost of litigation, grow like Topsy.

In the debate between Straus and Galama:

http://www.fitug.de/news/newsticker/old/2000/newsticker010800100831.html

I prefer the Galama line of reasoning. And don't forget Robin Jacob's strictures on catastrophic cost, whenever there is litigation over which of two inventors derived the invention from the other.

But as I said above, now that the USA has switched to First to File, and given that the Rest of the World has some sort of Grace Period, it is silly for Europe to hold out against it.

Industry already knows not to rely on the Grace Period. A few dramatic cases of loss of rights, for academic inventors who mistakenly put their trust in the Grace Period, and then academia will also come to understand how important it is to tell the Patent Office your invention before you tell anybody else. Even for academics, it's a simple thing to grasp, not so complicated as rocket or brain science.

Anonymous said...


When a small company finds that the cost of litigating which of two inventors derived the invention from the other (starts at 100'000 USD, most likely 300'000 USD, may reach 500'000 USD or 1M USD), the default - and very reasonable - action is simply forfeiting the invention...

These user opinions could be seen as merely echoing the interests of large applicants and US universities who are obviously very amenable to such costs.

The grace period, and the senseless litigation that it invites, will really bring about "catastrophic costs" for SME's and European Universities.

Or not: giving up will be much, much cheaper for an SME.

The grace period favours applicants with big pockets and... law firms.

The road to hell is paved with good intentions.

Anonymous said...

I substantially agree with the comments brought against the introduction of a grace period in Europe in previous comments. There is no compelling case whatsoever to introduce a grace period in Europe, even if some member states of the EPC had one before EPC times.

It is not because it has been pushed by the US in the US-Asia trade agreement that Europe has to follow. That a grace period made sense in the US system of first to invent is not the issue. The issue is more to see what is the extent of the problem.

How many applications stem for individual inventors? Probably much less than from SMEs, which is already not a lot. If the problem is so pressing as assumed in the FICPI paper, there must exist some verifiable figures. In the absence of such figures, there is no reason to change the status quo, and things should remain as they are.

The grace period might be an excellent topic for academic studies, but its impact on application figures seems to tend towards nil.

Two examples come to mind when one thinks of individual inventors. The first one is Ray Milton Dolby, who was fully aware of the problem. When he left the US, he came to the UK and all his patents, at least in the early days of his company, claim UK priorities. he did not fall in the trap of early disclosure and did not need a grace period. The second one is J.Palmaz, the inventor of the modern expendable stent. Even if he made some disclosures (D2 and D3) before the US priority date, it was an other US patent which led to limitation of his later EP patent. Other tests with his stents (D10) were covered by an implicit confidentiality agreement as discussed in T 819/93, cf. Point 4.1 of the reasons.

Rather than spent time and money on amending the EPC, which would need a diplomatic conference, the money should be spent on an awareness campaign for individual inventors and university research departments.

If a diplomatic conference is to be called, it should prima facie insure that the Boards of Appeal are effectively out of the reach of the President of the EPO, whoever this may be.

When is FICPI coming up with a proposal in this matter?

Glad to be out of the madhouse said...

I used to be dead against the idea of a grace period, until I spoke by chance with the manager of a Central European research institute who bitterly complained that their publications only ever appeared to attract the interest of American venture capitalists, never of Europeans.

It didn't take much reflection to understand that an important reason for this is that, once published, a potentially lucrative invention can't be patented in Europe anymore, whereas the grace period in the US offers the opportunity to inventors to publicise their ideas and attract investors before filing an application.

As a patent practitioner, as in any other highly specialised job, it is all too easy to fall into tunnel vision and lose sight of the larger picture. We can of course say that researchers and inventors should know better and file first before publishing. But this overlooks the fact that drafting and filing a first patent application requires a significant upfront investment, and that researchers probably have better uses for that money than paying us to draft and file applications that will then fall into oblivion for lack of commercial interest. And increasingly arcane rulings on priority by the Boards of Appeal of the EPO and national judges certainly do not help increase my confidence that even a professionally and carefully drafted early first filing will provide safety to subsequently disclose the invention in a scientific paper or conference.

I now believe that a (strictly regulated) grace period for inventor disclosures will be a useful tool to encourage and increase innovation in Europe, which should be, after all, the whole point of the EPC. Of course safeguards will be necessary to prevent litigation on the subject to run out of hand, but this issue should be contemplated with some perspective.

MaxDrei said...

Interesting contributions from Anon late yesterday evening and Glad, this morning. I think the cost of drafting a patent application, and the time it takes to get it on file, are much exaggerated. Given an academic Inventor, and an academic Institution, that understand the imperative of filing before publishing, it can be done fast, economically and effectively. Think, what is the point of filing? Surely not to go into production or enforce the patent. They just want to sign up a wealthy and committed licensee. With a clean legal position and no Grace Period fog, they are more likely to get one, aren't they?

It is the AIA switch to First to File which heats up the Grace Period debate. But for me the Grace Period provisions of the AIA are a cruel deception by Big Corp of all those inventors whe erroneously suppose that they can publiush then file. They are destined to be disappointed. They will find that Big Corp has stripped them clean of any enforeceable rights, much faster because of their publication than if they had just waited till after filing at the Patent Office.

The self-interest of the trans-national corporations, their lackeys (in house patent counsel?) and useful idiots (IP professors? Patent judges? EU Commission in Brussels?), is slowly bringing the patent system into disrepute. Introduction of a world-wide Grace Period will hasten the process, which would be a crying shame. Europe is a big enough jurisdiction for its "no grace period" law to to preserve chances for David, against Goliath, world-wide. Once Europe succumbs, David's chances dwindle.

What is it that inhibits litigants from telling the court a load of porky pies? Fact-finding (discovery and cross-examination) under English law. Sweep that away and litigants will no longer have any qualms about lying through their teeth to the court. Switch to a Grace Period and watch the fall-out. Catastrophic for the little guy, trying the battle Big Corp.

Glad to be out of the madhouse said...

MaxDrei, you appear to overlook Leo Steenbeek's comment above, listing the requirements in the EPO’s Economic and
Scientific Advisory Board's recommendation, and in particular this one: "Mandatory declaration requirement: mandatory list of disclosures specifying when, how and which information about the invention was made available to the public."

I think that such a requirement would greatly reduce the risk of increased litigation, and prevent most subsequent fibbing on this subject. With that mandatory declaration, I believe that the patent system's objective to reward innovation and disclosure would be greatly served.

I think the cost of drafting a patent application, and the time it takes to get it on file, are much exaggerated. Given an academic Inventor, and an academic Institution, that understand the imperative of filing before publishing, it can be done fast, economically and effectively.

Firstly, while I believe that most academic researchers may find the loose cash to file single applications, the problem for research institutions is that they generate too many potentially patentable ideas and are almost universally ill-equipped to separate the gold from the chaff at first sight.

As for academic researchers' and institutions' (or even some corporations') ability to understand the imperative of filing before publishing, I'll just bite my tongue. I'll just note that the access to qualified patent practitioners to draft a patent application is, quite unfortunately, highly unequal across Europe, and that which may be taken for granted in London, Munich or Paris may not be that easy in Thessaloniki, Byalistok or Funchal...

Anon of 21.01.2016-22.05-GMT said...

I am more inclined to follow Max Drei than "Glad to be out of the mad house".

What is brought forward by the latter is not whether there is a necessity to have a grace period or not. It is a question of rendering affordable the filing of applications by SMEs and research institutions. This has nothing to do with a grace period, and bringing in the grace period is merely confusing the issue.

Whether in some parts of Europe there are less able representatives is a matter which again has nothing to do with a grace period. It is a matter of training and qualification.

When all the countries of Eastern Europe joined EPO, as well as Greece a few years earlier, national representatives of those states became European Qualified representatives thanks to the "grand-father" rule. EPO offered training to all those "grand-fathers". Only very very few took the opportunity to get knowledge of the EPC, the EPO and its procedure. The vast majority added a title on their business card, but without having the corresponding capacity.

There are even schemes to increase the number of candidates to be successful at the EQE in those states. It is the CSP=candidates support program financed by the EPO. Saying that there are not enough qualified representatives in those countries is thus not correct. Eventually there will be enough. Again, this has nothing to do with a grace period.

When one sees that now the European Commission is thinking of providing a kind of insurance for SMEs in case of litigation, it shows clearly were the problem lies. The problem is not a question of law, the problem is simply a question of money!

I know for a fact that US universities file under the PCT and if they find financial backing they will pursue the matter after the 30/31 months period. In the absence of money, they simply drop the application.

Please save us of a system which will only help to confuse the issue. That the grace period might be a nice thing for academics to discuss, fair enough, but it should stay were it is. Money is what is needed, not a grace period!

MaxDrei said...

Yesterday evening's anon poster sets up another comment from me. Thank you.

Anon reminds us of all those rich American universities that routinely file PCT. Does anybody think they routinely rely on a Grace Period though? Of course they don't. They have long known better than to do that.

Indeed, it does all come down to money. But never underestimate the national interest in the thinking of Americans. It is in their national interest that IPR-ignorant universities outside the USA naively put their trust in a grace period, naively supposing it to be what made America, in technology, the world's most innovative nation. Don't swallow that tosh. It's nonsense.

America became the world's leading technology nation despite the Grace Period, not because of it. There is nobody quicker than an American, to grab what is grabbable. Fair do's though. You have to admire, not criticise, their grab raids, when no law is broken and no moral sense of right and wrong is offended. The very purpose of any patent system is to disseminate innovation as fast as possible.

Reliance on a Grace Period simply makes every otherwise patentable invention even more instantly and easily grabbable. And does anybody doubt that, once a Grace Period is part of the law, inexperienced inventors and naive academic institutions will routinely rely upon it, and they will go on doing so until they have learned (the hard way) not to do it, losing along the way all their precious money and any chance of getting rich, and having to watch the Americans getting even more rich, on all the technology they have Hoover-ed up from all round the world.

Those who wrote the EPC knew what they were doing. And they were doing it in the best interests of Europe's inmventors. Introducing a Grace Period will hurt them, not help them. If you want to help, explain to them all how American Universities get so rich. Encourage them to copy the Americans, when it comes to how best to protect and exploit inventions. It ain't by using the Grace Period.

The "late" Anon.. said...

I would not take an anti-US stance as Max Drei has done, but I would go so far as to say that what is good for the US is not necessarily good for the rest of the world. They have a grace period and it is, and was, good for them, but please leave us in peace, and save us from such a legal monster.

There are more urgent matters than the grace period to think of. When will we see a statement of FICPI about what is happening at the EPO, and especially with respect to what is done to the BA?

Therefore I still do not understand why three European qualified representatives embarked on such issue. A first comment of mine was rejected, may be because I said this. I maintain.

If one looks at a more greater picture, I would say that the picture on the grace period is similar to what it will be with the UPC. Who will benefit primarily of the UPC? Answer: US proprietors and more generally non-European ones.

According to official statistics of the EPO, the number of filings from member states of the EPO has gone down from 50% in 2010 to 35% in 2014. And a number of those European applicants are subsidiaries from US or non-European companies. When one even thinks of member states of the UPC the proportion will even be lower, at best 30%. The figures for 2015 hare not yet available, but I doubt the trend will change. Among non-European applicants, the US ones have maintained their share at roughly a quarter of the applications filed at the EPO.

Who will then primarily benefit of the possibility to sue in a much more comfortable way European patent owners? Answer: the non-Europeans. That the same capability is given to European patent owners will not compensate for the profound imbalance in figures.

The grace period is only one aspect, but it is the tip of the iceberg of many more problems. And we all know what happened to the Titanic.

Garfield said...

MaxDrei: "And does anybody doubt that, once a Grace Period is part of the law, inexperienced inventors and naive academic institutions will routinely rely upon it, and they will go on doing so until they have learned (the hard way) not to do it..."

Under the AIA, the US grace period is not merely the safety net favoured by FICPI, in a first-inventor-to-file system. Rather, it has at least the superficial appearance of a "first-inventor-to-publish" system. If an inventor publishes his invention, then ostensibly he is shielded not only from disclosures derived from his own publication, but also from later independent disclosures of the invention by anyone else.

Since later patent applications by these independent inventors are not shielded from our inventor's publication, this effectively means that his publication acts as a priority document in the USA. It can be used to attack the novelty and obviousness of those later independently-invented patents by others. But our inventor's patent is shielded from theirs. Furthermore, this is true even if those independent inventors file their patent applications a few months before our inventor.

Or does it? The USPTO has set a strict test. The inventor's publication will only shield him for the identical invention. Maybe the US courts will eventually disagree with that, but otherwise compare it with the European "same invention" test for priority under Decision G2/98.

We know that under the G2/98 "same invention" test, a priority document which merely discloses a preferred embodiment is unlikely to give priority for a broad claim in a later European application. So naive inventors will come a cropper if they rely on priority from provisional patent applications which merely consist of a copy of a journal article they are about to publish.

Similarly, as MaxDrei predicts, naive inventors are likely to come a cropper if they rely on being first to publish under the USPTO's interpretation of the AIA grace period. A subsequent patent application which is not identical to their published journal article (or whatever) is likely to be open to attack.

There is of course a legitimate debate as to whether a grace period is a good idea. But if there is to be one, then to be effective it would require two things:

First, it would need to be a true shield against publications of the inventor's own work, even if his subsequent patent application is not identical. It would have to mean that his graced publication can never be used against him, even in an obviousness attack.

Second, I think that few outside the USA would suggest that such a broad shield is justified when it comes to intervening publications or patent applications by an independent third party. So the AIA's first-to-publish protection against independent disclosures has to go. Our graced inventor will be at risk from intervening publications or patent applications made independently by others.

THE US anon said...

Garfield,

Your views are not in accord with US law under the AIA.

There is no such "publish" then let someone else file protection.

Any such "publish first" protection is ultra thin and does not cover obvious variants - those selfsame variants that will block you as a later filer but first publisher.

Where MaxDrei is correct here is that post AIA, one would be indeed foolish to "trust" the now razor thin grace period.

Where MaxDrei errs is in his own views of the more historical nature and what a more robust grace period used to provide. As to those errors, one just needs to "consider the source."

Garfield said...

US Anon, I think you've missed my point.

I said that the AIA grace period superficially appears to give protection to the first to publish, irrespective of whether they are first to file. See 35USC102 (b)(1)(B) and (b)(2)(B)

But if the US courts follow the USPTO's interpretation, then yes, any such "publish first" protection is ultra thin. That's why I said that naive inventors who rely on it are likely to come a cropper.

You, Max and I are all in agreement on this.

THE US anon said...

Garfield,

Let me first make clear that I did not miss your point. I wanted to stress even more so the weakness that the US grace period has now become, AND stress the error that MaxDrei embraces as to what a decently strong grace period does provide.

Yes, there is some alignment (commonality) in our shared view that the new US grace period is a joke.

How much a joke - we differ.
The value of the previous grace period - I daresay we differ there as well.

As usual, I think that MaxDei's view of US law is - and remains - seriously flawed. I do struggle to ever find his views having any relation with the fundamentals of US law, and I wonder why he spends so much of his time commenting on things he obviously does not understand.

Take universities for example. They are simply not geared -as are businesses - to maximize the value of innovation through patents or using patents as a FULL business tool. I have had universities as clients and while I did explain the spectrum of possibilities, the "mission" of the university (both in general and in specific) simply are in a different alignment.

His view of "despite" rather than "because" (of the previous strong version of Grace) is clear and unmitigated bollocks. I find that he often takes bizarre views of the (former) strong US system - as if a strong patent system is simply "bad" in his mind.

As to any foreign sovereign's choice to have or not have a grace period - meh, I am not so inclined to try to impose by views. If a sovereign wants a weaker patent system (which will be the result of not having a strong Grace), that is fully within that sovereign's dominion.

Anonymous said...

Responding to MaxDrei and Glad to be out of the madhouse.

"Firstly, while I believe that most academic researchers may find the loose cash to file single applications, the problem for research institutions is that they generate too many potentially patentable ideas and are almost universally ill-equipped to separate the gold from the chaff at first sight."

Correct. It would also help if the gold was reliably shiny enough to be distinguished from the chaff. If picking winners was easy, everyone would do it - and University technology transfer offices would have substantially higher patent budgets.

With all due respect to the UKIPO, a UK patent is also of limited use. Whilst universities generally can find the loose cash to file single applications, filing international applications is a very different and less budget friendly matter.

Any university researcher who is sufficiently motivated to come forward with an invention disclosure, will normally be sufficiently patent savvy to understand that they need to file before publishing. That doesn't tend to be the problem. The problem, more often than not, is that the amount of material required for an academic paper is nowhere near the amount of material one would ideally include in a patent specification.

You might be able to persuade the researcher to postpone his/her publication until they can put together a few more examples for the patent - but I wish you the very best of luck in that endeavor. The technology transfer department is then left with twelve months to make the best they can of a too-early filed specification and will normally be relying on a researcher who may or may not have the time, research funding or in some cases, inclination to flesh out an 'old' patent application.

I'm not sure that a grace period would solve all those problems but having some additional leeway around filing would make many of them more tractable.

MaxDrei said...

That last contributer puts her (or his) finger precisely on the point of difficulty.

But so did UK patent law, back in 1949, in the Patents Act of that year. Been there, done that, as it were. Of course, back in 1949, the UK was known for the excellence of its scientific research and the usefulness of its technology base (rather than for its financial "engineering", in all its cunning, novel and non-obvious glory). Those were the days, eh?

http://www.legislation.gov.uk/ukpga/1949/87/pdfs/ukpga_19490087_en.pdf

What a pity now, that the founding fathers of the EPC in 1973 were not persuaded of the merits of including in the EPC the provisions of Section 52 of the 1949 Act, for that would have met the needs of the academics in the fields of the "useful arts" without the legal quagmire of a Grace Period.

Can any reader throw any light on why Section 52 did not "make the cut"?

THE US anon said...

Anonymous at 10:29 makes some good points.

To which, I would add (as it appears not to have yet been taken into the context of the discussion here) that the model of academia is simply different than the model of business, in at least the following rather important adage captures:

"Publish or perish"

Having investigated career paths in academia and in the "real world" long ago, this adage very much came into play - and very much still does (from my experience in the legal world working with University Tech Transfer Offices).

Further, I find MaxDrei's attempted sleight of business methods ("financial engineering") of poor taste and not fitting here. It's as if he believes that promotion there is not worthy of anything, and - at least in the U.S. - that "belief" is most errant.

Additionally, MaxDrei (once again) presupposes his own conclusion and "announces" a "legal quagmire" where none (in the U.S. - under the formerly strong Grace period) existed. Since his own backyard never did have the type of Grace that he wishes to condemn, one has to wonder from where is MaxDrei obtaining his venom?

Garfield said...

"...a 'legal quagmire' where none... existed"

A "legal quagmire" under the previous US grace period is that if you are advising the patentee's competitor about the validity of a patent, then you can't be sure whether the grace period will apply. That's because you can't tell what date of invention the patentee might be able to prove.

So if you have a knock-out reference from an independent source, published within the grace period, you don't know whether or not the patentee will be able to swear behind it, or whether you can cite it under the pre-AIA 35 USC 102(a).

A "legal quagmire" under the current AIA grace period is that if you are advising the patentee's competitor about the validity of a patent, then you can't be sure whether the grace period will apply. That's because you can't tell what date of public disclosure the patentee might be able to prove (perhaps disclosed in some location you don't know about).

So if you have a knock-out reference from an independent source, published within the grace period, you don't know whether or not the patentee will be able to avoid it under 35USC102 (b)(1)(B).

Garfield said...

MaxDrei: "Can any reader throw any light on why Section 52 did not "make the cut"?"

Because section 52 of the 1949 Act went further than required by the Paris Convention.

Bodenhausen comments that Paris only requires priority to be recognised where the subsequent filing concerns the same subject matter as the first filing, on which the right of priority is based. So if there is an intervening publication, Paris does not require that elements which have no priority should be protected from obviousness attacks, as Section 52 did.

The EPC was based on what Paris required, and didn't go as far as section 52. Decision T 301/87 (Biogen) looked hopeful, but was overruled by G 3/93.

I suggest you might like to read the commentary in the Black Book about section 6 of the 1977 Act.

In early 1978, preparing for the new Act about to come into force, I attended a seminar given by a highly-respected former president of CIPA (sadly no longer with us). He described his discussions in which he had convinced the Parliamentary draftsman that section 6 (1977) was necessary, in order to preserve the effect of section 52 (1949).

Unfortunately, section 130(7) of the 1977 Act says that section 6 should be interpreted as having the same effect as the EPC. And the EPC has nothing corresponding to section 52 (1949). The Black Book describes how this led Robin Jacob to emasculate section 6 in Beloit v. Valmet.

I agree with you about the merits of section 52, but I'm afraid it's long gone.

THE US anon said...

Garfield,

I appreciate your view, but I would distinguish between a legal quagmire with the Einstein notion as being as simple as possible, but not more so.

Perhaps having the U.S. system as the first learned system (as opposed to a First to File system) biases my view of what is (and is not) a legal quagmire, but navigating the ability to establish a date of invention prior to filing was not all that difficult or exasperating.

Garfield said...

"... navigating the ability to establish a date of invention prior to filing was not all that difficult or exasperating."

Except that wasn't the quagmire I described.

THE US anon said...

Thanks Garfield - lost in translation then....

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