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Tuesday, 17 December 2013

Grace periods for patents: a call from ALLEA

Today this Kat received by way of email attachment the Statement Adopted on the Occasion of a Conference on “Grace Period“ in Kiev, October 10, 2013, this conference being convened by the European Federation of Academies of Sciences and Humanities (ALLEA) and the National Academy of Sciences of Ukraine (NAS). What's all this about, you wonder.  The Statement, which you can read here or download here, explains:
"In the Kiev Conference on “Grace Period“, ..., chaired by Professor Joseph Straus, chair of ALLEA Permanent Working Group on Intellectual Property Rights, representatives of ALLEA for the first time met with representatives of the European Patent Office (EPO), the Japanese Patent Office (JPO), the State Intellectual Property Office of the PR China (SIPO), and the State Intellectual Property Service of Ukraine, to discuss the instrument of grace period in patent law which immunises inventors against their own disclosures preceding the filing of patent applications".
The IPKat understands that this is very much a live topic right now, given the work of the Tegernsee Experts Group in this area, as discussed in a hot-off-the-press article by Shohei Ishimaru and Yuichiro Nakaya, "International harmonization of the grace period: the experience of Japan", already published in next month's Journal of Intellectual Property Law & Practice (2014) 9 (1): 61-74.  Anyway, according to the conference's conclusions:
"3.1.1 Based on empirical evidence offered at the Conference, that a grace period of general type shielding the inventor or his successor in title, against any disclosure to the public by means of a written or oral description, by use, or in any other way, no matter where the disclosure occurred, and irrespective whether such disclosure is intentional or not, should be viewed as a minimum standard to be found in all national patent laws or regional patent law treaties [with a minimum standard like that, wonders Merpel, what would a maximum one be like?].

3.1.2 That such a grace period should be one of at least six months preceding the national or regional filing.

3.1.3 That notwithstanding the consideration above [3.1.2], a six-months grace period preceding the priority filing would be a preferred alternative for the minimum standard.

3.2 That for reasons of legal certainty, and having regard to objections continuously raised against a grace period of general type, the grace period should be invoked by the applicant formally at the filing date and should be complemented with a declaration indicating 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 procedure of formal invocation and declaration sounds fascinating, says Merpel, but (i) how precisely does it tie in with "reasons of legal certainty" and (ii) what might be the consequences of a declaration that only indicates some of the pre-filing disclosures, where it is the totality of separate disclosures that would otherwise undermine novelty -- would there be an equivalent of fraud on the Patent Office, or what?]

3.3 That such a grace period would adequately take into account the interests of the inventor as well as those of competitors and the public at large [shouldn't this be the other way round: surely the need is to take into account the interests of competitors and the public at large, since the whole point of the grace period is that it takes account of the interest of the inventor], and would also provide for a balance of interests in the international context ...  and be in line with the general principles underlying the patent system.

3.4 That the adoption of the proposed minimum standard related to grace period of a general type would in no way affect the provisions related to such a grace period already in force in a number of Member States of the World Trade Organisation.

3.5 That the adoption of the proposed minimum standard should in no way interfere with the ongoing efforts to internationally harmonise the rules related to the grace period which at present vary to a large extent ... and therefore should be viewed as a final goal of international efforts aimed at a broader harmonisation of substantive patent law".
This Kat has always been suspicious of grace periods, partly because he is not used to dealing with them and partly because he has always rather liked the old-fashioned notion of file first, disclose later -- particularly when coupled with the equally old-fashioned notion of the provisional patent application.  However, having said that, he has nothing against a grace period so long as the checks and balances to protect competitors are effective and so long as every patent-granting country has the same grace period, governed by the same rules -- to avoid the silliness of an invention being patentable in some countries but not in others by operation at national level of what is essentially an arbitrary rule: in reality, it matters little in the long run whether the grace period is six months, eight months or a year, but consistency in its operation in the real world matters greatly to people who finance the research and development that take patents from drawing board to industrial applications.

Grace and Favour here


Anonymous said...

Yes, great idea. Would be excellent though if harmonised with everyone else in terms of time period, whether it runs from filing or priority date and whether applies to PCTs or means you need to go straight to national. This is great news for the small guys who worry about NDAs etc, when they don't even know if it's patentable yet.

MaxDrei said...$FILE/grace_period_en.pdf

This is a Link to the 56 page pdf Report of the Tegernsee Group, on the ticklish issue of the Grace Period.

Of course the representatives of academic science, meeting in Kiev, are in favour of a Grace Period. A well-known German IPR academic(the Max Planck's very own Prof. Dr Josef Straus) chaired the Kiev Meeting. Germany still has its Grace Period for its 10 year term national patents. When those little patents are litigated, German on German, the Grace Period is no Problem for the judges to manage. The fun will start (and the luvely Jubbley for the litigators) when non-Europeans start to invoke the Grace Period in their patent litigations in Germany. The academics in Munich and Kiev have, I suspect, keine Ahnung how much damage to efficiency, justice and legal certainty will result.

Good for the litigators though. No doubt about that.

Anonymous said...

Agreed. Have had way too many independent inventors who come to file a patent application after having had 1000+ people test their product and say that it is great.

Anonymous said...

MaxDrei: "The fun will start (and the luvely Jubbley for the litigators) when non-Europeans start to invoke the Grace Period in their patent litigations in Germany."

This is why a declaration is needed on or shortly after filing, so everyone can be certain what is graced without having to wait for a court to tell them.

Anonymous said...

No matter how many excuses are made for it, I've never liked the idea of a grace period, excepting in certain restricted circumstances, always preferring the legal certainty of the filing date. In an international company, I have had much experience of the US branch of the firm, assuming as many Americans do, that the rest of the world works the same way as the US does, wrecking good innovations in that rest of the world by unrestricted public disclosures. I was surprised by the introduction of the AIA, because I always assumed that the quid pro quo for first-to-file would be a universal grace period. If we have to have a grace period, it should indeed be universal.

Anonymous said...

Two thoughts irritate:

1) not liking something merely because of unfamiliarity

2) nonsensical obsession with universality of patent law. Patent law has been - and always should be - respectful first of national sovereignty.

MaxDrei said...

Good contribution there, from that anon with experience of the US view, to mention the AIA.

Nobody yet knows what scope of protection is afforded by the gracing provisions of the AIA, because they are so different from what the USA had prior to the AIA and because there has never been anything like them ever before. Many commentators see them as worse than useless to those who need them. They promise much but will turn to dust when reliance is placed on them. It is cruel and dishonest, to lead academic scientists on, that they can publish and then patent, only for them to find out too late that they are well and truly screwed by the lawyers' fancy Grace Period provisions drafted by the big corporations.

Those academics are in fact better served by drumming home to them the clear simple mesaage, to tell the PTO before you tell anybody else what your patentable invention is.

Anon concludes with a sentence that associates the adjective "universal" with the noun "grace period". Now there's a laugh! As far as I know, every jurisdiction in the world has a "Grace Period" of some form or other. So the question "Grace Period Y/N" is asked and answered already. The real task then is to get to a world-wide "universal" agreement as to which disclosures are graced and which are not. I imagine that the USA thinks that, with the AIA, it has done its bit for harmonisation and so now it is the turn of the ROW, and only a matter of time before the rest of the world has the good grace to write into its patent laws, verbatim, the grace period provisions of the AIA.

One step at a time, I say. Let us first see how the Supreme Court of the USA construes the AIA Grace Period, shall we?

Anonymous said...

MaxDrei @ 12:30 hits upon an interesting point.

But can those with inventions NOW wait the possible 10 to 15 years before a case with the pertinent facts winds through the USPTO, the district court, the court of appeals, and finally (maybe) to the US Supreme Court to get that construction?

That too seems like a promise of much providing little (at least in the needed time - which is now).

And until the Court does provide its view, the view that must (of necessity) be relied upon is that of the Office.

In other words - one MUST file first, as even an obvious variant (unless one can prove derivation - and that seems highly unlikely) by anyone filed after your own publication but prior to your own filing will serve as a patentability block based on obviousness.

Yes, the "grace period" was retained, but it is paper thin and really not worth anything at all.

Anonymous said...

When introduced into the EPC, how would a grace period work?

The easy case is a disclosure by the applicant=inventor within the grace period. This disclosure has to be disregarded.

Of course in almost all cases the applicant is not the inventor, so that will be one source of interesting case law.

Now what happens if the applicant (or the inventor?) discloses his invention to the public during the grace period. A third party (maybe a competitor) studies the invention and discloses the same invention or some variation of it, before the priority date of the later application.

How is the applicant protected? Must he prove that the other disclosure somehow had its basis in his own disclosure?

Or does the applicant's own disclosure act as a kind of priority right? That's about as useless as depending on the typical provisional US application in the form of a powerpoint presentation... just try to draft a claim without infringing the equivalent of Art. 87(1).

Anonymous said...

I should probably first have read all the comments. The anonymous of 13:54:00 seems to have answered at least one of my questions already. It will depend on the ability to prove derivation (assuming the US system would be adopted). That's extremely risky to bet on.

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