FICPI views on a novelty grace period in a global patent system Jan Modin, CET special reporter, international patents Tegernsee Symposium Tokyo 10 July 2014 1
FICPI short presentation IP attorneys in private practice Members in 80+ countries See 2
FICPI work on Grace Period Resolution Vienna 1983: Welcomes the proposal that the International Bureau of WIPO prepares a study concerning the effects of public disclosure by or derived from the inventor before a patent application is filed, Urges that the study be implemented in depth and with urgency in order to promote a uniform and general solution to the problem. 3
FICPI further resolutions on GP 1986 Funchal Harmonization of Patent Laws 1987 Hilton Head Harmonization of Patent Laws 1997 Copenhagen Substantive Harmonization Utility Model Protection 2000 Vancouver International Grace Period 2002 Prague Grace period 2004 Singapore SPLT Harmonization Harmonization not Centralization 2005 Korea Progress Towards Harmonization 2007 Amsterdam Prior user rights and a novelty grace period 2008 Sydney Grace period for Unregistered Community Designs Grace period and Declaration for Patents 2010 Buenos Aires Pre-Grant Publication 2011 Cape Town Grace Period 4
FICPI revisiting GP in 2012-2013 Triggered by Tegernsee Group study US patent law reform AIA Japan new patent law Korean new patent law Discussions in FICPI Work and Study Commission CET FICPI Working Group on Grace Period 2012 FICPI White Paper adopted at ExCo Cartagena 2013 5
Justification of Grace Period, benefits to society and the public at large Promote technological innovation Protect innovators from early disclosure Facilitate transfer of technology and joint development Provide technological information through patent publication Provide balance of rights and obligations among stakeholders in the patent system Stimulate innovators to develop commercial embodiments Enable investments in production capability and marketing Above benefits in line with Art 7 of TRIPS agreement 6
Justification of Grace Period, benefits to third parties and competitors Increased legal certainty applicant s disclosure before filing is not determinative of the validity of a patent Third parties may evaluate validity with greater certainty Third parties are made aware of new technology Disclosed inventions are channelled through the patent system, will be systematically classified and claimed Patent applications will invoke presentation of pertinent prior art and a comprehensive disclosure in a patent specification, thus increasing overall knowledge in the particular field of technology 7
Justification of Grace Period, benefits to inventors, assignees and licensees Award of exclusive rights even after disclosure Economic return on efforts made Allow patent drafter to expand on idea Allow applicant to finalize invention, work out embodiments, construct prototypes, carry out validation trials, cooperate with other technical advisors, improve patent quality Protect the inventor from self-collision in case additional features are disclosed and then later included in a subsequent patent application 8
Justification of Grace Period, benefits to certain categories of applicants Those who must test the invention openly while developing the invention (e.g. a hull of a boat) Academia, universities and public research organisations being under pressure to publish early, also to get financial support Joint inventors and joint ventures with companies SMEs that have limited knowledge of novelty rules and realize the need to patent an invention only after successful marketing and sale 9
Importance of uniform rules in all jurisdictions Varying novelty requirements cause imbalances, desirable to have uniformity in terms of existence of an effective grace period duration of a grace period provisions relating to third party disclosures and activities occurring during a grace period after prefiling disclosure voluntary or mandatory declaration at the time of filing. 10
Positive experience in various jurisdictions Currently GP without major problems in e.g. US, CA, BR, AU, RU, EE, JP, KR In respect of design applications in EU Before 1978 for patents in DE, now for utility models Where it exists, it appears to be generally accepted Unfortunately, no reliable statistical data available except for JP FICPI members report no major problems in jurisdictions where an effective GP exists 11
Uncertainty for third parties? When EPC was worked out in Europe, the concern was for the inventor/applicant who should not be given a false sense of security Today, the concern in Europe is for third parties: perceived difficulty with freedom to operate analysis technology disclosed by others cannot be used freely, longer period between disclosure and publication of a corresponding patent application Only applicant knows exactly what is contained in a patent application, not third parties 12
Uncertainty for third parties, cont.? Two perspectives on imbalance: European view: asymmetry because of longer period from pre-filing disclosure to publication of patent application US and CA view: Publication without associated exclusive rights is unfair, especially if a patent is not granted Uncertainty exists even without a grace period, were pre-filing activities novelty destroying? 13
Mandatory declaration? Need for exception in case pre-filing disclosure unknown to applicant, or if date of disclosure cannot be determined Possibly a trap for applicant if activity will later be regarded to be public Invalidation attacks may become frequent On balance, FICPI is NOT in favour of a Declaration, in any case not a mandatory one. 14
Priority date or filing date? Arguments in favour of priority date Priority date is currently provided for in a number of major jurisdictions, Priority date was envisaged in the draft SPLT Allows applicants and attorneys to use the full 12 months term of the Paris convention, even in case of a pre-filing disclosure. Thus, the same filing strategy can be used. The applicant only has to make sure that the subsequently filed patent applications do not contain new matter to be claimed 15
Priority date or filing date? Arguments in favour of filing date It is common that a subsequently filed patent application contains new subject matter in the claims, and such new matter may lack novelty and/or inventive step if more than 12 months have elapsed from the pre-filing disclosure In jurisdictions using provisional applications, new matter is frequently introduced when filing a complete or regular application, causing problems at least in other jurisdictions A PCT application can be filed within 12 months from the prefiling disclosure, even including new matter in the claims Even if a claimed priority later turns out to be invalid, there is no self-collision in respect of the subject matter of the prefiling disclosure 16
Priority date or filing date? (cont.) FICPI has acknowledged the pros and cons of both approaches FICPI did not wish to take a firm position on which is the better approach! 17
Safety net aspects and prior user rights Grace period should be a limited exception to the absolute novelty provisions existing in modern patent systems There should be an incentive for the applicant to file early after a pre-filing disclosure Accordingly, prior user rights should be acknowledged to third parties who, before the filing date, either makes improvements independently or improves a publicly disclosed and unprotected invention and starts using it, provided that all other requirements for prior user rights are met. FICPI is currently working on these issues but has not yet taken an exact position in respect of prior user rights. 18
Summary of FICPI s position on a Grace Period Term 12 months Counted from priority date OR filing date Purpose: safety net Coverage or scope: any form of prior disclosure caused by or derived from the inventor independent disclosures by others should not be covered, and a pre-filing disclosure does not constitute a priority right Any Declaration should not be mandatory Procedures may be adopted to determine entitlement to GP Third parties may acquire prior user rights irrespective of a pre-filing disclosure, provided that all other criteria for prior user rights are met. 19
Comments on the Tegernsee final report encouraging aspects Generally, the consolidated report is very interesting, although most of the results correspond to what can be expected. Stakeholders tend to favour the law and practice existing in their own jurisdictions. It is encouraging that European users are more supportive (53,8%) than previously. Traditionally, European industry has strongly opposed the grace period. Even among large corporations, only half of them were against GP. It is good that only some 10-20% of all respondents think that a GP complicates the patent system. 20
Comments on the Tegernsee final report surprising aspects As many as 61.5 % of the German respondents were against the GP. Germany had a GP provision in its patent law before 1978 (before EPC). On the other hand, the support for a GP is rather high in DK and GB (about 80%). Many large companies have made errors and have used the GP in the US, JP and EP. Even in EP, the GP is regarded to balance the purpose of the patent system and the needs of the scientific community. Only 16% of US and 28% of JP favour GP as a safety net only. Also, only 15.5% of US and 28% of JP would favour that prior user rights be available for prior users in good faith. 21
Possible way forward on grace period a few suggestions from FICPI This is a political issue, but IP5 offices may want to consider harmonized principles for a GP, including also the other key aspects of patent law and then convince governments, legislators and users to implement such principles in the respective jurisdictions As to GP, uniformity is important in respect of - the duration of the GP (6 or 12 months), FICPI favours 12 months - whether a Declaration should be mandatory, FICPI favours NO Declaration - provisions relating to third party disclosures and activities occurring during the grace period, FICPI favours acknowledgment of prior user rights 22
Possible way forward on grace period a few suggestions from FICPI In parallel, B+ countries should negotiate on the same principles Discussions in WIPO (SCP) should be postponed until the Development Agenda Group of countries also have expressed support for the same key aspects of patent law harmonization There is value for all stakeholders even if there is harmonization only among B+ countries 23
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