The Patent Grace Period in Selected States

In "Grace Period and Invention Law in Europe and Selected States," the IPR Helpdesk gives an overview of the underlying conflicts regarding grace periods for patent novelty, the recent state of the law in selected states (discussed below), the arguments for and against implementation and, finally, what must be taken into account as long as Europe does not offer a general grace period (also discussed below).

According to their paper, Art. 55 of the European Patent Convention allows for a six-month grace period in just two limited circumstances, when

1. a third person has disclosed the invention in an abusive way which obviously harms the applicants' interests, for example, by a publication on the part of a third person without the will and acceptance of the inventor or other authorised person; and
2. the applicant has displayed the invention at an official international exhibition falling within the terms of the Convention on international exhibitions.

In addition, under Portuguese national law, "the grace period for abusive disclosures does not have any time limit" anf there is a 12-month grace period for "communications made before scientific societies or professional technical associations or for the purpose of Portuguese or international competitions, exhibitions or fairs which are official or officially recognized in any country of the Union." Under Spanish national law, another "six-month grace period is allowed for tests carried out by the applicant or by his legal predecessor, provided that they do not imply working the invention or offering it for sale." However, applicants using these specific grace periods to apply for a Spanish or Portuguese are not able to successfully file a European or other national patent application which does not offer a comparable grace period.

Germany, Austria, the Czech Republic and Hungary also provide for a general six-month grace period to file a utility model after the disclosure of an invention. "However, in spite of repeated efforts to implement a Community Utility Model and to harmonise the Member States' utility model law, a pan-European framework for utility models does not yet exist."

Under U.S. patent law, "a previous disclosure by any means and by whomsoever cannot destroy the novelty of the invention, if it is made less than one year prior to the filing of the patent application. The grace period is actually used for 20 % of all patent applications in the United States filed by researchers, universities and public research organisations. Although Japan (six months), Canada (one year) and Russia (sixth months) all use the "first-to-file" system, they still include a general grace period in their patent laws."

Chinese Patent Law offers a specific sixth-month grace period for inventions which have been disclosed in an obviously abusive way or disclosed at a "prescribed academic or technological meeting" or at an international exhibition, if it is "sponsored or recognized by the Chinese Government."

"The principle of absolute novelty forces researchers and other inventors to keep their inventions secret until the date of filing," they advise. "Therefore, the following should be noted:

• Before publishing research results by any means (written, oral, via Inter- or Intranet, by use or in any other way), carefully check or ask a patent expert to check if your publication contains a new, patentable invention.
• Do not publish research results including patentable inventions before filing a planned patent application.
• Never pass on patentable inventions or associated information to business partners or other third persons before applying for a patent without concluding a written confidentiality agreement.

To preserve the novelty of an invention in spite of its publication, it is absolutely necessary to file a patent application prior to publication at the European or a national Patent Office, fulfilling the conditions of Art. 80 EPC in its actual version."

For a discussion of proposals for a patent grace period for Europe, see European Commission, Report on The Hearing of 5th October 1998 on a Grace Period for Patents, Official Journal EPO 1999, page 155; European Commission, An assessment of the implications for basic genetic engineering research of failure to publish, or late publication of, papers on subjects which could be patentable as required under Article 16(b) of Directive 98/44/EC on the legal protection of biotechnological inventions, COM (2002) 2 final of 14.01.2002; Straus, Joseph, Expert Opinion on the Introduction of a Grace Period in European Patent Law, Munich 2002; Galama, Jan E.M., Expert Opinion on the Case for and against the Introduction of a Grace Period in European Patent Law, Eindhoven 2002.