[Date Prev][Date Next][Thread Prev][Thread Next][Date Index][Thread Index]
[FYI] EPC Grace Period
- To: firstname.lastname@example.org
- Subject: [FYI] EPC Grace Period
- From: "PA Axel H Horns" <email@example.com>
- Date: Tue, 1 Aug 2000 09:42:51 +0200
- Comment: This message comes from the debate mailing list.
- Organization: PA Axel H Horns
- Reply-to: firstname.lastname@example.org
- Sender: email@example.com
[Ist fuer die Frage der Software-Patentierung nicht ohne Belang. --
------------------------------- CUT -------------------------------
THE CASE FOR AND AGAINST THE INTRODUCTION OF A GRACE PERIOD IN
EUROPEAN PATENT LAW
The Intergovernmental Conference of the member states of the European
Patent Organisation on the reform of the patent system in Europe
(Paris, 24 to 25 June 1999) adopted, among other things, a mandate
which reads as follows:
"4 - Effects of disclosures
The Intergovernmental Conference,
considering that research institutes, universities and certain firms
wish to be able to file patent applications while at the same time
being obliged to practise certain forms of disclosure,
considering that modern means of communication such as the Internet
increase the risk that the results of research might be disclosed
considering that, both in Europe and in other countries worldwide,
these disclosures prevent inventors from obtaining patent protection
for their inventions,
mandates the Organisation to examine under what conditions the
effects of disclosures prior to filing could be taken into account in
European patent law."
In pursuance of this mandate the Administrative Council of the
European Patent Organisation in turn mandated the completion of two
expert opinions from Mr Jan Galama and Professor Dr Joseph Straus on
the case for and against a so-called "grace period", protecting an
inventor from a disclosure of his invention prior to the filing of a
patent application. These opinions have now been completed and
submitted to the Administrative Council.
The Administrative Council and the European Patent Office share the
view that these two studies should be brought to the attention of the
interested public in order to stimulate the ongoing debate on this
controversial issue and to provide a basis for a broad public
consultation at European and national level.
A summary as well as the full text of the expert opinions are
Fulltext version of Mr. Galama's opinion [PDF 90 KB] Fulltext version
of Dr. Straus' opinion [PDF 272 KB]
Summary of Mr Galama's opinion
The thrust of Mr Galama's opinion is that the introduction of a grace
period into European patent law would be detrimental and should not
be supported because it would reduce legal certainty for third
parties and may confuse individual inventors giving them a false
sense of security. Global high-speed communication through the
Internet, the growing economic significance of patents and worldwide
competition require a clear-cut patent system on which every one can
and must rely. Personal inventors would be most at risk from a grace
period in that third parties may derive intervening rights from an
early disclosure. This would effectively diminish the inventor's
rights especially in highly competitive fields such as information
technology and biotechnology. If academics wish to compete in the
economic world they should be prepared to relinquish old habits, such
as early publication.
The introduction of a general grace period by revision of the EPC
would put European inventors in a disadvantageous position because
there would be no guarantee of reciprocity from other countries. The
introduction of a grace period within the context of an international
treaty without substantive patent law harmonisation would still leave
the problem, encountered during the negotiations on the "old" Patent
Law Treaty in the early 1990's that, due to the peculiarities of the
US "first-to-invent" system, the US understanding of the notion of
grace period is not the same as in Europe. In particular the issue of
prior user rights and European insistence that disclosures during the
grace period should not be understood as creating a priority date may
prove "impossible" to reconcile with the US position. The
introduction of a grace period as part of broad international
harmonisation of patent law remains somewhat hypothetical given that
the US show no willingness to abandon the first-to-invent system, and
even if it did, it is likely that in any negotiations elements of the
first-to-invent system would be retained, threatening to "compromise"
the integrity of the clear and well functioning first-to-file system.
Mr Galama concludes that even if the US were willing to move on first-
to-invent, this would not be sufficient reason to adopt a grace
period due to the uncertainties and likely misconceptions involved.
As an alternative to a grace period Mr Galama suggests six possible
courses of action:
(i) Extend use of "provisional applications" to allow for an early
filing date and allow the applicant to disclose the invention even if
time does not permit the filing of a "fully worked out" application,
Article 5 of the Patent Law Treaty 2000 contains such a proposal and
should be supported by the EPO.
(ii) Extend the notion of "evident abuse" in Article 55(1)(a) EPC
which is currently too narrow to be of much practical benefit to
inventors. Consider covering "unintentional" disclosures within this
(iii) Enlarge the list of recognised international exhibitions under
Article 55 (1)(b)EPC.
(iv) Take action to improve general patent awareness.
(v) Target potential inventors and improve the teaching of technology
courses at university so that they have more IP content.
(vi) Increase the number of patent professionals/IP experts in Europe
and tailor more post graduate courses specifically with the needs of
IP professionals in mind.
Summary of Professor Straus' opinion
Professor Straus argues that the introduction of a general grace
period into European patent law is desirable since some form of grace
period is currently provided for in the patent laws of thirty eight
countries worldwide including three countries, Estonia, Romania and
Slovenia which may join the EPO in 2002. The absence of such
provision in Europe could have negative economic consequences
including the shifting of investment and technological development
out of Europe to countries where pre-filing disclosures are not
necessarily prejudicial to patent filing.
Both the United Kingdom and Germany previously recognised a grace
period in their patent laws and this did not give rise to any
difficulty. Neither does experience in jurisdictions such as Canada
and Japan suggest that such a provision gives rise to problems and it
is primarily used as a "safety net". Even existing European patent
law cannot guarantee absolute legal certainty. In patent grant
proceedings account has to be taken of oral disclosures and public
use in determining the state of the art. The situation will become
more difficult with the increased use of the Internet. Legal
certainty is therefore a relative concept and does not depend upon
the existence or otherwise of a grace period. Furthermore, third
parties already have to cope with some degree of uncertainty. Patent
applications are not published until eighteen months from the
priority date and even then it is not clear until the grant procedure
has finished what exactly the nature of the exclusive rights claimed
will be. Account has to be taken of the growing significance of
academic and research institutes as patent applicants and generators
of innovation relevant knowledge. There is a need to facilitate early
publication of research results. Disclosure in parallel to or only
after filing a patent application does not entirely meet this need
since it is not always feasible to file a patent application at an
early stage and in any event the absolute bar on filing for
previously disclosed inventions is disproportionate to any
inadvertence on the part of the inventor. It is not only inventors
which suffer whenever a useful invention is excluded from patent
protection but society at large. Statistics from Japan, US and
Germany make clear that early disclosure is of particular importance
for academic/research institutions and independent inventors and the
needs of this sector should be given more recognition in Europe.
However, statistics from Japan, where the grace period has to be
invoked, also clearly reveal its importance for large industry: 47%
of applications invoking grace period in 1999 were filed by large
companies. Provisional applications do not offer a satisfactory
remedy because they do not address inadvertent disclosures at all and
even in other cases they pose a risk that the original disclosure
will prove inadequate as a basis for any subsequent application.
Professor Straus makes five specific recommendations:
(i) The EPC contracting states should join the already significant
group of states whose patent laws already provide for a general grace
period and which all, with the exception of the United States of
America, apply the first-to-file system.
(ii) The grace period should cover all forms of pre-filing
disclosures by the applicant/inventor or his predecessor in title.
(iii) Whether a grace period of twelve or six months is to be
adopted, should be considered with a view to possible international
(iv) In principle, the grace period should precede the Paris
Convention priority date. However, this issue too may be viewed under
the aspect of possible international harmonisation.
(v) In principle, the invoking of the grace period should not be made
dependent on any time limits or formalities, since they may seriously
diminish its effects. However, should considerations of legal
certainty lead to a compellingly different result, a system
comparable to that applied in Japan and some other states may offer
an acceptable alternative.
------------------------------- CUT -------------------------------