Grace Period – A Matter of Patent Law Harmonization and International ...€¦ · Grace Period – A Matter of Patent Law Harmonization and International Trade Distortion Prof.
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The Notion of "Grace Period“ – A Clarifying Reminder
• "General grace period" is a specific period of time preceding the filing or the priority of a patent application, during which disclosures by any means (in writing, orally, by use, on exhibitions, etc.) of the invention for which the patent application is filed by the inventor or his/her successor in title do not constitute prior art in respect of the patent application at hand.
• Such "non-prejudicial" disclosures do not establish a priority date,i.e. do not provide for immunity for the inventor/applicant againstparallel or later independent disclosures, including patentapplications of third parties.
• Argentina (12), Australia (12), Brazil (12), Canada (12), China (6), Colombia (12), India (6), Indonesia (12), Ireland – on behalf of 25 EU Members (6), Japan (6), Kenya (12), Malaysia (12), Mexico (12), Moldova (6), Morocco (12), New Zealand (12), Norway(6), Romania (6), Russian Federaton (6), Switzerland (? 6), Turkey (6), Ukraine (12), USA (12)
Lack of "Grace Period" – Not Only an Issue of Patent Law Harmonization but also of Distortion of Trade and Free Riding
• Clear and commonly recognized need exists for "grace period" as safety net
• Historically no negative experience – inventors and industry – also European – have successfully coped with it world-wide
• A white spot lacking grace period defended with obsolete arguments but allowing – on purpose or not – in effect free riding on inventions patented in the majority of WTO members – offends against the very genuine spirit of TRIPS and the entire WTO legal order
• Although AIPPI harmonization proposal – ideal solution – for foreseeable time – unrealistic
• Required – a minimum standard for a "grace period" - which will remove the existing trade distortion - has to be established
• Grace Period of six or twelve months – preceding priority date
• Should be invoked by the applicant formally at the (priority) filing date
• Should be complemented with a declaration indicating pre-filing disclosure(s)
• Declaration to be submitted to the patent office within reasonable period of time following the (priority) filing – no later than before publication of application