Saturday, 26 October 2013

Let there be Grace for Inventors

This post is about the desirability of a grace period in the patent system. A grace period "forgives" an inventor
who has made a disclosure within the grace period before filing his patent application, by excluding from the "prior art" that disclosure and ones derived from it.

There is a grace period in effect for registered design protection at both UK and Community level and in the USA. 

I belong to the British Group of AIPPI.  It is an excellent organisation. It is part of an International organisation. Each year every national group is invited to provide answers to the same questions of interest in Intellectual Property Law. Then all of the papers are considered in a closed caucus at an International meeting and Resolutions are forthcoming. Don't bother going to the expensive International meetings because you can't get into the closed caucus so its all rather frustrating, but they do publish the Resolutions of the "important" people who are allowed in.

This year one of the questions, Question 233 concerned Grace Periods for patents. I and another SOLO James Peel were  part of the group. Initially the group was very much in favour of maintaining the legal certainty that the existing UK system provides. However I managed to make some points that remained in the final UK report, in particular the submissions says

There is some suggestion that SMEs would find an economic benefit from a wider grace period. This is primarily said to be due to the grace period providing a review period between disclosing the invention and filing a patent which may allow the SME to seek investors and/or assess the likely commercial success of the patented product before incurring the professional fees associated with filing a patent. It may also avoid the risk of SMEs making decisions about patent filings before carrying out effective market research and testing in order to ascertain whether the patent would be of value to them.
In any event, over in Helsinki the Resolution was passed in favour of an Internationally harmonised one year grace period without a requirement to make a declaration that the inventor is relying on the grace period.

How, though, are we to convince Vince Cable to put some political force behind the idea? The Unitary Patent Regulation does not provide for a grace period and implementing that and its associated Tribunal against the majority will of the professions, is absorbing all the patent related enthusiasm of the government. Still it would be nice if the grace period were not forgotten. Who else supports it?


  1. I think the US system shows that a grace period works, and rarely results in complications. I think it's important for the patent system to continue to change to defer costs and this would be a welcome development. I've seen many inventors fretting about the cost of a patent application before they have had a chance to gauge commercial interest, and so I think this would be very helpful to them.

  2. Interestingly the UK IPO Tegernsee Experts Group Response has now been published on 30 October 2013 with the same outcome but no way forward. You can read it here

  3. The IPO is now trying to determine whether users of the UK patent system support the introduction of a grace period, and if so on what terms