Wednesday 2 July 2014

Grace as a Safety Net

Tegernsee where the IPOs met

Yesterday I attended a roundtable meeting organised by the UK IPO to discuss how or indeed whether they should take forward proposals for the introduction of a grace period following the research carried out by a group of national patent offices under the romantic name of the Tegernsee user consultation. The report is here.

As we introduced ourselves around the table (an extraordinarily long and rectangular one to be construed as "round") I mentioned that I blogged. As a result, when the introductions were complete, someone suggested that the meeting should be confidential. It was conceded that Chatham House rules would apply so that you shall never know who attempted to suppress blogging freedom. Now of course I feel obliged to report extensively on the prospective delights of the grace period.

You may have noted that I find the idea attractive and was very encouraged by the adoption by AIPPI of support for a no declaration grace period in October 2013.

Those around the table included a large number representing CIPA (whose response to the Tegernsee query is here and an undated paper in opposition to grace periods is here)  and some other professional or trade bodies as well as some industry representatives and other practitioners including active patent litigators. I represent no one except the world as I see it informed by my contact with entrepreneurial clients not all of whom are micro-entities as many assume.

The USA and Japan already have grace periods. Most of us are familiar with the US law but there seemed to be some disagreement around the table whether the requirement for an information disclosure statement was the equivalent of a mandatory declaration. The Japanese law is more complex (this 2007 article by a respected friend may help) and does require a declaration at the time of filing. The enthusiasm of the Japanese patent office to make their grace period effective is measured by the fact that they sent a delegate to this roundtable and are organising an event in Tokyo which will be attended by the UK IPO on 10 July (registration closes tomorrow).

Hotly disputed issues included
  • Whether an invention was saved by being patented after a graced disclosure or set free the world to enjoy at an earlier date. Pragmatically this seems to depend on whether you manage a pharmaceutical company (saved) or a university inventor who would prefer a Nobel Prize.
  • Whether the introduction of a grace period would lead to changes in corporate behaviour. For example would companies deliberately make graced publications in order to create novelty destroying prior art against their competitor's application while allowing their own to proceed. There may be some logical flaws in this particular idea but it is certainly worth trying to dream up possible abuses before the legislation is put in place.
  • Whether you need a detailed declaration, a tick box or nothing at all to benefit.
  • Whether an application made using the grace provisions be published immediately.
There did however seem to be a degree of consensus that any grace period should be before the priority date and the more countries that had harmonised legislation the better. In principle, any reasonable amount of harmonisation requires an amendment to the EPC which would necessarily flow through to unified patents, but is nevertheless perceived by all as a monumental obstacle. Let us hope we are proved wrong. Even so, the Japanese approach of looking after their own might be something that the UK government should look at.

What does seem apparent to this commentator is that industry voices (for this read pharma and others who have the ear of the PM and were vociferous at even this table) will have the most influence and the views of open innovators who prefer to eschew the patent system, or indeed start-up companies who need a little more freedom to evaluate their ideas in situations that might be confidential and then again might not be, before deciding whether a patent application is justified, will struggle to be heard.

If you want to make your views known, you are at liberty to contact Sean Dennhey in the IPO

I shall also look forward to hearing what the CIPA policy on grace periods is or is going to be if we are able to create any consensus now that we are led by pharma. 

This is only the briefest of notes and many other roundtablers would probably have a completely different perspective. I would be the first to admit that my reporting is coloured by my position that harmonising with the US grace period (no declaration) would lead to significant benefits for the entrepreneurial culture of the United Kingdom and not necessarily more patents. If your views differ or you are good at crystal ball gazing to envisage potential abuse or other consequences, you are very welcome to comment and advocate your position here.

PS the EPO representative did learn that her organisation's attitude to added subject matter created much disharmony.


  1. Thanks for this.

    Worth noting that Australia also has a one-year grace period. There's a summary of the requirements and a brief comparison of the US and Australian systems with regard to the grace period on the excellent patentology blog here:

    For what it's worth, I'm strongly in favour of a grace period. My experience has been that the absence of one disadvantages clients who aren't as IP-savvy (solo inventors, micro-entities, start-ups and smaller businessness). IP is normally further down the priority list, or gets looked at almost as an afterthought, by which time it's usually too late.

    If we want an IP system that encourages innovation at all levels, including down at the lower end, then we need a grace period to act as a safety net for these types of organisations/individuals.


  2. The ambition of harmonisation discussion would be that the grace period should could apply prior to the priority date so that the applicant does not lose the benefit of the priority year. Its not going to be an easy thing to achieve but if we can shout louder to the politicians and Patent Offices than the large industry voices (who simply feel that rigid control of their staff and legal certainty are paramount) it could be achieved

  3. WIPO also maintains a list of countries with grace periods at the following link:

  4. Canada is very good at grace periods.

    We have a year post publication to file, like our brothers in the U.S. We also provide for late national phase entry through the PCT, to the tune of an extra 12 months. You can also revive a patent application up 12 months after the original Response was due.

    There are small fees along the way: currently $200 a shot.