tag:blogger.com,1999:blog-5574479.post4904358807971109472..comments2024-03-29T12:23:31.959+00:00Comments on The IPKat: Grace periods: waving the flag and pre-filing disclosureVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger10125tag:blogger.com,1999:blog-5574479.post-13327887390436341722014-02-01T21:24:16.801+00:002014-02-01T21:24:16.801+00:00Full disclosure: I'm a US citizen. My beef wit...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'ADave Zethmayrhttps://www.blogger.com/profile/14816659985000505057noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-56872177636430348792014-01-15T23:03:26.901+00:002014-01-15T23:03:26.901+00:00Roufousse, the new issue of JIPLP has in it an art...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.<br /><br />So it seems there is at least one patent that people cite in justification of a Grace Period.<br /><br />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.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-31067396880755948572014-01-15T17:53:34.384+00:002014-01-15T17:53:34.384+00:00Aren't there regularly calls on this blog for ...Aren't there regularly calls on this blog for the implementation of policies based on evidence?<br /><br />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.<br /><br />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. <br /><br />Art. 55 EPC is AFAIK essentially a holdover of the mid-XIXth century, in the days where <a href="http://en.wikipedia.org/wiki/List_of_world_expositions" rel="nofollow">industrial exhibitions</a> (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. <br />Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-25731876063510907852014-01-14T12:35:07.122+00:002014-01-14T12:35:07.122+00:00Already the Comments thread is interesting. Barba...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.<br /><br />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?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-18599564223657759682014-01-14T12:23:08.147+00:002014-01-14T12:23:08.147+00:00I find that suggestion quite interesting, though f...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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-2266712751885560232014-01-14T10:12:20.109+00:002014-01-14T10:12:20.109+00:00Whilst all the suggestions in the article are inte...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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-86786351045811141342014-01-14T09:33:38.441+00:002014-01-14T09:33:38.441+00:00I agree with the grace period. Richard's sugge...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. Filemothttps://www.blogger.com/profile/15735898485265104580noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-61009504659327201192014-01-14T09:11:34.937+00:002014-01-14T09:11:34.937+00:00Why do we always have to look out for the minority...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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-50274006018843316532014-01-14T08:53:39.057+00:002014-01-14T08:53:39.057+00:00First reaction: excellent suggestion.
Many in the...First reaction: excellent suggestion.<br /><br />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.<br /><br />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?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-86590735063929587782014-01-14T08:49:55.175+00:002014-01-14T08:49:55.175+00:00Yes, I'd say that's quite a good idea actu...Yes, I'd say that's quite a good idea actually.patentlyhttps://www.blogger.com/profile/00602962323262055007noreply@blogger.com