Grace periods: waving the flag and pre-filing disclosure

One of the IPKat's posts late last year, "Grace periods for patents: a call from ALLEA" (17 December, here) attracted a little flurry of interest at the time, but was over taken by events -- two events, to be precise, Christmas and the New Year. The candle of interest, once kindled, did however continue to flicker in the ever-creative mind of veteran patent attorney Richard Gallafent (Gallafents LLP), who offers us the following illuminating contribution to the great grace period debate:

Reading the 17th December posting in connection with grace periods and the statement adopted by ALLEA, I am prompted to table yet again a proposal which I believe solves the vexed question of declaration, where I believe there are still vigorously opposed camps.

The ALLEA conclusions come down firmly in favour of a requirement, if a grace period is ever to be usable in a given case, of making a declaration at the filing date, but I believe it goes too far in requiring that declaration to indicate “pre-filing disclosures, which should be submitted to the Patent Office within a reasonable period of time following the filing of the patent application”. This is likely to be burdensome for some, and if the list of disclosures has to be seen as complete, what then is the effect of a disclosure which, for reasons of error, is simply omitted from the list? Or which is a derivative disclosure of which the applicant, at the filing date, or within whatever the specified period was, had no knowledge? If such incompleteness can be condoned, then why have a list of material at all?

My proposition is simple. If you know, at the time of filing, that there are pre-filing disclosures which would prejudice your securing a valid patent under the usual absolute novelty rules, then you should invoke the grace period and say so. No further specification should be necessary unless and until the matter comes to require decision, e.g. in opposition or invalidation proceedings or in later litigation. That restricts the general burden of identifying what the disclosures were to only those cases of interest. The rest, whether because they never get granted anyway or because they are of no practical or commercial significance, do not merit effort spent on identifying the earlier disclosures.

But there is a logical consequence of reliance upon the grace period which too is simple. If, on filing, the applicant declares that he or she wishes to invoke the grace period because there is an earlier disclosure which, as noted above, would render the patent otherwise invalid on absolute novelty grounds, then the information is already in the public domain. As such, there can be no disadvantage, since the information about the invention is in the public domain anyway, in letting the world know about the invention straight away. In other words, if you invoke the grace period, then your application should be published as soon as practicable. Nowadays, this is easily done for the majority of Offices which have online file inspection. The flag allowing online file inspection should go up as soon as the filing is on the database.

I recall that, at one stage, Inpadoc even had a publication code for the publication of the minimal detail available shortly after filing in countries such as the UK which published the name of the applicant, the application number, the filing date and the title. It was “A0”. An A0 publication for any grace period- invoking application ought to be simple.

Bartholemew always likes
to file before he discloses
Immediate publication acts, as I believe many would support, to militate against use of the grace period to delay filing. It is, of course, better and simpler to stick with the “file before you disclose “rule but sometimes, for all sorts of reasons, not least late realisation that there is a patentable invention there, a grace period is a sensible component of the numerous checks and balances built into the patent system itself -- and the desirability of a “universal” grace period coming into force at the same time for everyone is difficult to overstress, though just how this could be orchestrated is beyond my power of suggestion.