Global 'grace period' for patent applications to be filed should be a year, say IPO survey respondents

Earlier this year the IPO launched a consultation seeking industry views on how to harmonise aspects of the differing patent law frameworks that apply across Europe, the US and Japan. Representatives from the European Patent Office, and from patent offices in Denmark, France, Germany, Japan, the UK and the US have been meeting to discuss how to achieve this.

One of the areas being assessed for harmonisation is the 'grace period' for patent applications to be brought. The term refers to the period of time in which a business can apply for a patent for an invention after which details of the invention have already been made public. Ordinarily the disclosure of research or other details of an invention prior to a patent application being filed is considered to count against the award of a patent for that invention. This is because patents can only be awarded where an invention is new and public disclosures of inventions ordinarily count as 'prior art'.

In several jurisdictions, however, there is a 'grace period' during which disclosures of inventions can be made without it impinging upon the novelty of those inventions from a patentability perspective. However, the calculation of the grace period differs across jurisdictions.

Respondents to the IPO's consultation, which include IBM, the Association of the British Pharmaceutical Industry (ABPI) and the Chartered Institute of Patent Attorneys (CIPA), said that a lack of harmonisation in this area "may be harming business and research in the UK and in Europe in comparison to other territories", the IPO said. Many respondents said that grace periods are welcome, because they "allow for the early publication of research results and allow inventors to test the marketability of their inventions and/or attract financing" and also "protect an inventor from the re-disclosure of an invention by third parties to whom the invention is disclosed".

The majority of the companies and trade bodies to reply to the IPO's consultation said they would back a globally recognised grace period lasting a year.

"Although there is no objective consensus as to the appropriate length of a grace period, there appears to be a subjective consensus that it should be for a reasonable period of time and balance both the need to preserve legal certainty and the damaging effects of premature disclosures," the IPO's consultation response paper (16-page / 202KB PDF) said. "The majority of respondents favour a twelve month grace period from the earliest relevant date (i.e. priority or filing) of an application. Respondents felt that this would increase legal certainty for third parties."

"The respondents’ experience of grace period provisions appeared to vary. Many stated that they have failed to obtain a patent because a grace period was not available or had been able to obtain a patent in one country (US) but not another (EU, UK) due to differing grace period provisions. All of those who have used the grace period felt that doing so had contributed to the success of their or their client’s business and/or research activities," the IPO said.

Grace periods should be said to begin from either the filing date or priority date given to a prospective patent, a majority of the respondents said. A patent's priority date is the date at which its validity is assessed. Usually this is the filing date of the relevant patent application, though sometimes an earlier date may apply due to there being a previous disclosure of the invention.

Patent law expert Adrian Murray of Pinsent Masons, the law firm behind Out-Law.com, said that fledgling companies and universities would be among those to gain from a harmonising of the grace period.

"If adopted into UK law and the European Patent Convention, this will obviously be a change welcomed by patent-owning entities," Murray said. "The change will be of particular benefit to start-ups and universities. Start-ups will be able to pitch their ideas to companies knowing that doing so will not result in invalidation of any subsequent patent filings made within a year.  Likewise, publication of articles by universities will no longer be an insurmountable bar to them securing patent protection for their innovations."

"In light of the UK Government’s other recent incentives to promote innovation, especially by smaller companies, coupled with the positive comments regarding the introduction of a grace period by the respondents in this consultation, it would be surprising if there was not now a move to implement this change into law," he added.