Patent harmonisation: a saving grace

When representatives of seven patent offices convened in Tegernsee, Germany in 2011, their aim was the harmonisation of the entire patent system. However, attracting the most interest was the harmonisation of a US concept not being used in most other jurisdictions, the grace period.

The European Patent Office (EPO), the Danish Patent and Trademark Office, the French Patent Office, the German Patent and Trademark Office, the Japanese Patent Office (JPO), the UK Intellectual Property Office (IPO) and the US Patent and Trademark Office (USPTO) all joined the discussions.

Put simply, the grace period protects an applicant who files a patent application even if the invention has previously been made public. It has worked in the US but many other major offices, including the EPO and the JPO, are yet to adopt it.

Usually, disclosure of research or details of an invention prior to an application being filed is considered to count against the award of a patent. The finer details of an invention can be considered ‘prior art’ and then need to be assessed to see whether the invention is new and inventive.

A grace period enables an application to be filed regardless of an earlier disclosure as long as the application is filed within a certain time period.

“If a client approaches me and says they have just disclosed an invention and were wondering if they could patent it, I used to have to say ‘only in the US’. If this were implemented, provided it was filed within a certain time period, it would mean they could file here,” explains Gwilym Roberts, partner at Kilburn & Strode LLP in London.

“Currently in the UK, if someone tries to assert a patent against me but they have made the invention public I can knock their patent out. Under the new model I would need to establish whether it was graced or not.”

"The next questions to ask should surround its finer details, including whether disclosure of a grace period is mandatory, and how long it should last."

The offices all agreed that implementation of a grace period was a necessity and, following the discussions, a survey was sent out to respondents, including practitioners and lobby groups in the relevant jurisdictions.

According to the resulting USPTO report User Consultation Feedback on Substantive Patent Law Harmonization, more than 84 percent of respondents agreed with the concept, yet it has still not been adopted by most countries other than the US.

“Most respondents feel that, in particular, the duration date from which the grace period is computed, and the scope of the grace period, should be harmonised,” the report said.

The UK IPO and the EPO also reported the statistics. The responses suggested that a timeframe similar to the US’s 12 months would be the preferred length. So why has the grace period not been implemented elsewhere?

“The level of support is very interesting; we know it’s been tried and tested in the US but I think most people would have thought Europe would be against it,” Roberts tells WIPR.

“A grace period is generally not liked here in Europe because we have an underlying principle of first-to-file. The rest of the European system stems from that logic … there is an emotive angle attached to it.”

WIPR was present when the issue was considered at a special forum during the International Association for the Protection of Intellectual Property (AIPPI) meeting in Helsinki in September 2013.

During the forum, an internationally harmonised grace period that would also be adopted by offices that were not part of the Tegernsee discussions was considered.

Margot Fröhlinger, principal director for patent laws and international affairs at the EPO, told the meeting it was a “long standing but controversial” debate. However, there was plenty of support for it.

“It is good news that a majority of people … would support a longer grace period for patents,” said Fröhlinger.

Nearly 93 percent of AIPPI’s executive committee, which recommends changes to laws, voted in favour of an internationally harmonised period of one year.

“It seems fairly positive,” says Roberts on the possibility of implementation, adding that for Europe to be in line is a “very telling” point.

Philipp Cepl, senior associate at Allen & Overy LLP in Dusseldorf, agrees with the proposals and says a grace period is something the “major IP countries” should definitely be considering.

However, says Cepl, it makes sense to take a pan-European approach rather than to see it implemented only in some European countries.

Who would benefit?

Implementation at some stage seems to be a strong possibility, making it important to consider who would benefit from such a system.

According to Cepl, it would be mainly smaller companies that would be given the green light to test their products publicly without fear that the technology would then be considered prior art.

“Furthermore, smaller and medium-sized companies can take their time to thoroughly assess whether to invest money to gain patent protection,” says Cepl, adding that the overall benefits of the system outweigh the negatives.

The grace period would also benefit universities and smaller research institutions, Cepl adds.

“Quite often they have an interest in publishing their research results at an early stage, before they can take a decision on whether their research results are patentable.”

Michael Oblon, partner at Perkins Coie in Washington, DC, has seen the advantages of the US’s grace period and says a harmonised system would be of “great benefit” to US companies looking to file abroad.

“Almost every US company considers whether to pursue international filings in addition to filing for a US patent. Many, if not a majority, of these companies prefer to begin commercialising products embodying their inventions before filing patent applications,” Oblon says.

However, although it has proved a positive system in the US, and Europe appears to be following suit, Roberts understands the arguments both for and against the grace period.

“A danger is that it increases uncertainty for third parties. For companies looking to legitimately move into a new market it could create a barrier for them and make it a bit more difficult to launch new products due to that extra tier of uncertainty. But it also means there will be more patenting, not less.”

Oblon adds that the first-to-file policy, which stemmed from the America Invents Act, could also have a detrimental effect on the system, particularly in regions such as Europe where the first-to-file system is the norm.

“Inventors take a greater risk by using the grace period and waiting to file a patent application after having first publicly disclosed the invention. For this reason, a grace period might never be acceptable in other countries that are long accustomed to a first-to-file system,” he says.

What next?

If approved, the Tegernsee plan would culminate in many offices adopting the grace period. But what of two major countries, South Korea and China, that were not at the talks?

Both are members of the IP5, the world’s most influential IP nations.

“Given the close relationship between the IP5 [EPO, JPO, USPTO, Korean IP Office and China’s State IP Office] I find it hard to believe they are not having these discussions as well,” Roberts says.

As the countries involved have largely agreed with the proposals in principle, he adds, the next questions to ask should surround its finer details, including whether disclosure of a grace period is mandatory, and how long it should last.

Cepl agrees, adding that the overall length and which countries will participate should be the key issues.

“The period should be at least six months but I would prefer 10 to 12 months. Only that will give companies enough time to thoroughly assess whether to invest money in patent protection and publicly test the products to be covered,” he says.

“It would be preferable if the EPO were to participate; there will be more national patents if a grace period is only implemented on a national basis, which would not be in the EU’s interest and would to some extent be contradictory to what is intended by creating the Unitary Patent,” Cepl adds.

Fröhlinger noted during the AIPPI meeting that the “main consensus” was that Europe would support a 12-month grace period if it were an element of a broader harmonisation package.

The USPTO’s consultation feedback agreed. “Nearly two-thirds of respondents view 12 months as the appropriate length … compared to about a quarter of respondents who favour a six-month grace period,” the report says.

However, as legislation is needed, implementation could still be some way off.

When WIPR spoke to the UK IPO, it said it would be presenting a “consolidated analysis” of the Tegernsee results to the heads of office in April.

“After this meeting we will determine the most suitable forum for taking this work forward,” it added.

Even though it may still be some way off, practitioners as well as IP offices worldwide appear to be leaning towards a harmonised graced period. The finer details are yet to be decided but Europe and the rest of the world may soon be moving towards a change to their established systems.