aippi
ELLAGRIN / SHUTTERSTOCK.COM
1 May 2015PatentsJonathan Osha

AIPPI: Patent harmonisation

A grace period generally refers to a length of time before the filing date of a patent application during which certain disclosures of the invention, either by the inventor or by a third party, do not count as prior art that is applicable to the application. These types of disclosures are also sometimes referred to as ‘non-prejudicial’ disclosures. Most countries have laws recognising a grace period of some form.

However, the types of disclosures that would be covered by the grace period, the steps required to invoke the grace period and the term of any applicable grace period all vary substantially from country to country. Therefore, it is frequently the case that a disclosure that would be protected by the grace period law of one country is not protected by the grace period law of another country, resulting in a potential loss of rights.

The practical effect of this, at least for patent owners wishing to preserve the opportunity to protect their rights in all possible countries, is that the grace period law of the most strict country in effect sets the standard that patent owners must meet for all inventions.

Similarly, nearly all jurisdictions have laws that recognise the rights of a valid prior user as an exception to the otherwise exclusive rights of a patent owner. While rarely invoked from a statistical perspective, prior user rights are nonetheless viewed as an essential element of a properly balanced patent system. In this context, ‘properly balanced’ means an appropriate balance between the patent owner’s rights under a first-to-file patent system and the lawful continuance of an activity that has been carried out in good faith since before the date of such patent filing.

As with the grace period, current national laws governing the scope and application of prior user rights vary significantly from country to country, making reliance on any standard virtually impossible, particularly for international applicants.

Aiming for harmonisation

The Tegernsee Group, formed in 2011 to consider the state of affairs concerning patent law harmonisation, comprises representatives from, and the heads of, the intellectual property offices of Denmark, France, Germany, Japan, the UK, the US, and the European Patent Office. At the group’s first meeting in July 2011, the grace period and prior user rights were two of six topics identified as being key to the substantive patent law harmonisation process.

During the group’s second meeting in 2012, it was decided that fact-finding studies on four topics would be carried out: the grace period; prior user rights; 18-month publication; and treatment of conflicting applications. The meeting mandated a group of experts to conduct these studies and prepare reports on each of these topics, which were completed in late 2012.

User consultations were then conducted throughout 2013, resulting in a ‘final consolidated report’, approved by the fifth Tegernsee meeting on April 8, 2014.

This report, which contains a wealth of information on user perspectives in the US, Europe, and Japan, concludes in part as follows:

“The vast majority of respondents in all three blocs consider the international harmonisation of prior user rights per se to be important or critical. European respondents consider such harmonisation to be even more important if the international harmonisation of prior user rights is considered within the context of a grace period.”

In addition to  this, AIPPI undertook a study of the international perspective on the grace period in 2013. As part of that study, AIPPI’s national and regional groups, which together with independent members represent more than 100 countries, were each asked to submit a report outlining the current status of the law on grace period, if any, in their jurisdiction and to propose an international standard for harmonisation. Based on the 42 reports that were received, a draft resolution was prepared for debate during the AIPPI executive committee meeting in Helsinki in September 2013.

The oral debate mirrored the national and regional group reports in reflecting differences of opinion on the main issues: duration of the grace period; types of disclosures covered; and the requirement for a statement or declaration to invoke the grace period. However, recognising that the need for harmonisation on the grace period is uniquely acute among IP topics, a consistent theme was the importance of harmonisation for the sake of harmonisation, over any particular details of term or process.

"The most frequent users of grace period provisions are universities, research institutes, and small and medium-sized enterprises."

A balanced view

Ultimately, the AIPPI executive committee passed, by a majority greater than 90%, a resolution strongly supporting the grace period. The resolution (detailed below) provided for a balanced grace period applicable to disclosures made by the inventor and by third parties who derived the content of a disclosure from the inventor:

1) Internationally, a grace period should be established in order to exclude from the prior art against the inventor or his successor in title, any disclosure to the public by means of a written or oral description, by use, or in any other way, made:

a) By the inventor or his successor in title, irrespective of whether such disclosure is intentional or not; or

b) By a third party who derived the content of the disclosure from the inventor or his successor in title, irrespective of whether such disclosure results from an abuse in relation to or was made against the will of the inventor or his successor in title.

The resolution specified that the grace period should not apply to non-derived works, and also should not apply to official IP office publications:

2) The grace period shall not exclude from the prior art:

a) Disclosures from a third party that are not derived from the inventor or his successor in title, even if said disclosures occur after a non-prejudicial disclosure; and

b) Disclosures resulting from the proper publication by an IP office of an application for or the grant of an IP right filed by the applicant or his successor in title.

The remaining elements of the AIPPI resolution were:

A duration of 12 months preceding the filing dates or earliest relevant priority date;

No requirement to deposit a statement or declaration;

That the grace period has no effect on the date of publication of the patent application; and

The burden of proof to exclude prior art is on the party claiming benefit of the grace period.

Following the AIPPI resolution, issuance of the final consolidated report from the Tegernsee consultation process in April 2014, and with the express purpose of pushing the harmonisation discussion forward, the Japanese Patent Office (JPO) organised the ‘Tegernsee symposium focused on a grace period’, which it hosted in Tokyo on July 10, 2014.

At the invitation of the JPO, AIPPI and the International Federation of Intellectual Property Attorneys acted as co-hosts for the symposium. A wide range of stakeholders and jurisdictions were represented at the symposium; they again reflected differences of opinion over implementation details, but showed strong overall support for harmonisation of laws in this area.

It was noted, based on the final consolidated report from the Tegernsee consultation process, that around the world by far the most frequent users of grace period provisions are universities, research institutes, and small and medium-sized enterprises. Large corporations seem generally not to rely on the grace period.

Prior user rights

As this work on the grace period was proceeding, AIPPI also turned to the related issue of prior user rights. Reports from the national and regional AIPPI groups were solicited in early 2014, resulting in 32 national reports being received. Based on these reports, a draft resolution was prepared for debate during the 2014 AIPPI congress in Toronto. Following an active debate, the executive committee of AIPPI passed, by a majority in excess of 90%, a resolution supporting a balanced prior user rights regime as follows:

1) A prior user right should be recognised when a party has used an embodiment falling within the scope of a patent before the filing date or, if earlier, the applicable priority date of the patent. A prior user right should also be recognised, at a minimum, when serious and effective preparations for the use of an embodiment within the scope of protection of a patent have been made.

2) The prior user right should be recognised as an exception to the exclusive rights of the patent owner afforded by the patent.

3) The prior user right should lapse upon the abandonment of the use and/or abandonment of the preparation of the use by the prior user.

4) A prior user right should in principle be limited to the country where the prior use took place. Therefore, the use of the invention in one country should not give rise to a prior user right in another country. In case of a regional patent with unitary effect, the prior user right should apply, as an exception to the patentee’s rights, on all the territories covered by the patent.

5) A prior user right should only arise if the prior user has acted in good faith.

6) A prior user right should be limited to embodiments within the scope of the patent that were used before the filing date or, if applicable, the applicable priority date of the patent or to substantially similar embodiments; prior user rights should not by definition extend to the entire scope of the patent.

7) A prior user right should be transferable, but only if it is transferred together with substantially all of the related enterprise or business.

8) The prior user right should not be licensable to another legal entity.

9) Prior user rights should be available in any field of technology and for any type of entity.

Overall, the interactive process that has occurred from 2011 to today, including initiatives from governments and non-governmental organisations (NGOs), has been positive in moving the relevant stakeholder opinions toward an international consensus. While NGO studies and resolutions have no binding authority in and of themselves, they are a useful part of the process.

This was recognised by the JPO, which noted: “The JPO considers resolutions such as the AIPPI resolutions on grace period and prior user rights to be informative when having discussions among patent offices about patent harmonisation.”

Hopefully, governments and NGOs alike will continue to push the discussion forward on grace period and prior user rights, so that the ultimate goal of a uniform international standard can eventually be achieved.

Jonathan Osha is deputy reporter general at  AIPPI and the founding partner of Osha Liang, an IP boutique firm headquartered in Houston, Texas. In addition to his IP prosecution and enforcement work, Osha supports the IP law harmonisation and educational efforts of AIPPI. He can be contacted at: j.osha@aippi.org

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