Maria del Carmen ARANA COURREJOLLES

Transcription

1 Question Q233 National Group: PERU Group[ Title: Grace period for patents Contributors: Maria del Carmen ARANA COURREJOLLES Reporter within Working Committee: [please insert name] Date: [April 12, 2013] Questions Questions The Groups are invited to answer the following questions under their national laws. If both national and regional laws apply to a question, please answer the question separately for each set of laws. Please number your answers with the same numbers used for the corresponding questions. I. Analysis of current law and case law 1) Does your country or region provide a grace period of any kind for patent applicants? As used in these questions, grace period includes any situation where a disclosure prior to a patent filing date that would normally qualify as prior art to the patent application is disqualified as or removed from the prior art. In fact, in Peru our current Andean legislation (Article 17 of Decision 486) provides for a grace period for patent applicants. 2) If the answer to Question (1) is yes, please answer the following sub-questions: a) What is the duration of the grace period? One year b) From what date is the grace period calculated? Please indicate the effect, if any, of an international filing date and/or a Paris Convention priority date. 1

2 One year prior to the filing date of the application in Peru or during the year before the date of priority, if claimed. c) What types of intentional acts, disclosures, or exhibitions by the applicant (including the inventor or co-inventor) qualify for the grace period? Presentation of the invention in occasion of inventor s tenders, exhibition in fairs, academic exhibitions. d) What types of unintentional acts, disclosures, or exhibitions by the applicant (including the inventor or co-inventor) qualify for the grace period? Occasional interviews or meetings carried out in connection with the invention. e) What types of acts, disclosures, or exhibitions by a third party who is not the applicant, inventor, or co-inventor qualify for the grace period? A competent national office that publishes the contents of a patent application filed by the inventor or the inventor s assignee in contravention of the applicable provision; or a third party who obtained the information directly (such as private contracts)or indirectly (such as industrial relations) from the inventor or the inventors assignee. f) To the extent not already answered in Question 2) e) above, is there any situation where a disclosure by a third party who did not learn of or derive the invention from the inventor(s) can be covered by the grace period? No other situation stated in the above mentioned provision. g) Is any type of statement or declaration by the applicant required to invoke the grace period? If yes: Although there are no formalities in this regard, with the patent application an exhibition certificate or an statement invoking the grace period may be filed. What are the requirements for the statement/declaration? When must the statement/declaration be filed? The statement could be submitted on filing the application, anticipating that the applicant participated in an inventor tender. However, if no disclosure statement is made on filing the application and any third party enters an opposition alleging that the invention lacks novelty and is invalid, the applicant would submit in said occasion the statement/ exhibition certificate. h) Is the grace period defined by a statute or regulation? If so, please provide a copy of the relevant portion of the statute or regulation. As mentioned above the grace period is defined by Article 17 of Decision 486 reading as follows: Article 17.- For the purposes of determining patentability, no account shall be taken of any disclosure of the contents of the patent during the year prior to the filing date of the application in the Member 2

3 Country or during the year before the date of priority, if claimed, providing that the disclosure was attributable to: a) the inventor or the inventor s assignee; b) a competent national office that publishes the contents of a patent application filed by the inventor or the inventor s assignee in contravention of the applicable provision; or, c) a third party who obtained the information directly or indirectly from the inventor or the inventor s assignee. i) Is there any special situation where only certain types of applicants/inventors are allowed to benefit from graced disclosures? (such applicants/inventors may include SMEs, universities, individuals, etc.) There is no discrimination to applicants/inventors in order to be benefited from graced disclosures. Policy 3) If your country or region provides a grace period for patents, please answer the following sub-questions: a) What are the policy reasons behind this grace period? To protect the applicants/inventors of intentional or unintentional disclosures that could lead to loss of novelty of their inventions. b) Is the grace period, as it currently exists in your country or region, considered useful? In our opinion grace period of one year is useful for safeguarding the rights of applicants/inventors. c) Is the grace period considered more useful for a certain class of stakeholders (for example, individuals, universities, small businesses, or large businesses)? No distinction for stakeholders. d) How often is the grace period used? If you are unable to provide a quantitative answer to this question, please indicate one of: often; occasionally; or almost never. In our country, grace period is occasionally used. It is common when there are inventor s tenders. 4) If your country or region does not provide a grace period for patents, please answer the following sub-questions: a) What are the policy reasons behind not providing a grace period? b) Would a grace period be useful for stakeholders in your country or region? 3

4 c) Would a grace period be considered more useful for a certain class of stakeholders (for example, individuals, universities, small businesses, or large businesses)? 5) What are the positive aspects of the grace period law of your country or region? We could mention as one of the positive aspects of the grace period law in our country to retain the novelty of the invention in spite of the intentional or unintentional disclosures. 6) What are the negative aspects of the grace period law of your country or region? No negative aspects. 7) As a practical matter, are the procedures and strategies of patent applicants in your jurisdiction affected by the grace period laws of other countries or regions? If so, in what way? In no way, since after filed the application in our country, the applicable legislation is the Decision 486 (Andean legislation). II. Proposals for harmonisation The Groups are invited to put forward proposals for the adoption of harmonized laws in relation to grace periods for patents. More specifically, the Groups are invited to answer the following questions without regard to their national laws. 8) In your view, and assuming a proper balance is struck between the rights of the applicant and the rights of the public at large, is a grace period for patents desirable? In our view, a grace period for patents is desirable. 9) Is harmonization of laws relating to grace periods for patents desirable? We consider it desirable to achieve the harmonization of laws relating to grace periods. 10) Please provide a standard that you consider to be best in each of the following areas relating to grace periods: a) The duration of the grace period One year b) The date from which the grace period is calculated As from the year before the priority date, if claimed, or one year from the filing date of the application in Peru in case of being the first application filed for the invention. c) The types of intentional acts or disclosures by the applicant (including the inventor or co-inventor) that should be covered by the grace period. Presentation of the invention in occasion of inventor s tenders, exhibition in fairs, academic exhibitions. 4

5 d) The types of unintentional acts or disclosures by the applicant (including the inventor or co-inventor) that should be covered by the grace period. Occasional interviews or meetings carried out in connection with the invention. e) The types of acts or disclosures by a third party who learned of or derived the invention from the applicant that should be covered by the grace period. A competent national office that publishes the contents of a patent application filed by the inventor or the inventor s assignee in contravention of the applicable provision; or a third party who obtained the information directly (such as private contracts)or indirectly (such as industrial relations) from the inventor or the inventors assignee. f) The types of acts or disclosures by a third party who did not learn of or derive the invention from the applicant that should be covered by the grace period. Said possibility is not ruled in our current legislation g) The requirement for and content of any statement/declaration by the applicant to invoke the grace period. Although there are no formalities in this regard, with the patent application an exhibition certificate or an statement invoking the grace period may be filed. The statement could be submitted on filing the application, anticipating that the applicant participated in an inventor tender. However, if no disclosure statement is made on filing the application and any third party enters an opposition alleging that the invention lacks novelty and is invalid, the applicant would submit in said occasion the statement/ exhibition certificate. 11) The Groups are invited to comment on any additional issue concerning grace periods for patents that they deem relevant. Summary Current Andean legislation (Article 17 of Decision 486) provides in Peru for a grace period of one year for patent applicants whereby the disclosure made by the inventor, inventor s assignee or unauthorized third parties prior to the filing of a patent application would not be considered as prior art for the purpose of determining novelty. The grace period can be invoked on filing a patent application or during the processing of the application, if any opposition arises based on lack of novelty, by the submission of an statement or a certificate of exhibition if the invention was subject matter of an inventor s tender. The grace periods in Peru are occasionally used but are common in occasion of inventor s tenders. In our view the grace period law of our country is desirable in order to safeguard the rights of applicants/inventors. Likewise it would be desirable to achieve the harmonization of laws worldwide relating to grace periods. Résumé 5

6 L actuelle législation andine (Article 17 de la Décision 486) prévoit au Pérou une période de grâce d un an pour les demandeurs de brevets, après quoi la divulgation faite par l inventor, cessionnaire de l inventeur ou tiers non autorisé avant de déposer una demande de brevet ne serait pas considéré comme état de la technique aux fins de la détermination de la nouveauté. La période de grâce peut être invoqué lors de la soumission d'une demande de brevet ou pendant le processus de la demande, s'il n'y a pas d'opposition sur la base de l'absence de nouveauté, en produisant une déclaration ou un certificat d'exposition si l'invention a fait l'objet d'un concours des inventeurs. Périodes de grâce au Pérou sont utilisés occasionnellement, mais sont communs à l occasion d un concurs des inventeurs. De notre point de vue, la loi de période de grâce est nécessaire pour protéger les droits des déposants/ inventeurs. Il serait également souhaitable de parvenir à une harmonisation de la législation au niveau mondial en ce qui concerne périodes de grâce. 6