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.