[FYI] EPC Grace Period

["PA Axel H Horns" <horns@t-online.de>]

[Ist fuer die Frage der Software-Patentierung nicht ohne Belang. --
AHH]

http://www.epo.co.at/news/headlns/2000_07_25_e.htm

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THE CASE FOR AND AGAINST THE INTRODUCTION OF A GRACE PERIOD IN 
EUROPEAN PATENT LAW  

Background  


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 
involuntarily,  

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 
reproduced below.  

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 
provision.  

(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 
harmonisation.  

(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.  

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