This Kat was probably not alone in being slightly bemused by the recent media reporting on the leaked “451-page dossier” describing US/UK talks on future trade arrangements. The BBC reportsthe dossier as showing that the US is interested in "extending patents” in the UK. How strange. Is the US government proposing some novel form of patent term extension currently unavailable to patentees in the UK? Fear not, IPKat is here to provide some clarity!

Today this Kat received by way of email attachment the Statement Adopted on the Occasion of a Conference on “Grace Period“ in Kiev, October 10, 2013, this conference being convened by the European Federation of Academies of Sciences and Humanities (ALLEA) and the National Academy of Sciences of Ukraine (NAS). What's all this about, you wonder.  The Statement, which you can read here or download here, explains:

"In the Kiev Conference on “Grace Period“, ..., chaired by Professor Joseph Straus, chair of ALLEA Permanent Working Group on Intellectual Property Rights, representatives of ALLEA for the first time met with representatives of the European Patent Office (EPO), the Japanese Patent Office (JPO), the State Intellectual Property Office of the PR China (SIPO), and the State Intellectual Property Service of Ukraine, to discuss the instrument of grace period in patent law which immunises inventors against their own disclosures preceding the filing of patent applications".

The IPKat understands that this is very much a live topic right now, given the work of the Tegernsee Experts Group in this area, as discussed in a hot-off-the-press article by Shohei Ishimaru and Yuichiro Nakaya, "International harmonization of the grace period: the experience of Japan", already published in next month's Journal of Intellectual Property Law & Practice (2014) 9 (1): 61-74.  Anyway, according to the conference's conclusions:

"3.1.1 Based on empirical evidence offered at the Conference, that a grace period of general type shielding the inventor or his successor in title, against any disclosure to the public by means of a written or oral description, by use, or in any other way, no matter where the disclosure occurred, and irrespective whether such disclosure is intentional or not, should be viewed as a minimum standard to be found in all national patent laws or regional patent law treaties [with a minimum standard like that, wonders Merpel, what would a maximum one be like?].

3.1.2 That such a grace period should be one of at least six months preceding the national or regional filing.

3.1.3 That notwithstanding the consideration above [3.1.2], a six-months grace period preceding the priority filing would be a preferred alternative for the minimum standard.

3.2 That for reasons of legal certainty, and having regard to objections continuously raised against a grace period of general type, the grace period should be invoked by the applicant formally at the filing date and should be complemented with a declaration indicating 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 procedure of formal invocation and declaration sounds fascinating, says Merpel, but (i) how precisely does it tie in with "reasons of legal certainty" and (ii) what might be the consequences of a declaration that only indicates some of the pre-filing disclosures, where it is the totality of separate disclosures that would otherwise undermine novelty -- would there be an equivalent of fraud on the Patent Office, or what?]

3.3 That such a grace period would adequately take into account the interests of the inventor as well as those of competitors and the public at large [shouldn't this be the other way round: surely the need is to take into account the interests of competitors and the public at large, since the whole point of the grace period is that it takes account of the interest of the inventor], and would also provide for a balance of interests in the international context ...  and be in line with the general principles underlying the patent system.

3.4 That the adoption of the proposed minimum standard related to grace period of a general type would in no way affect the provisions related to such a grace period already in force in a number of Member States of the World Trade Organisation.

3.5 That the adoption of the proposed minimum standard should in no way interfere with the ongoing efforts to internationally harmonise the rules related to the grace period which at present vary to a large extent ... and therefore should be viewed as a final goal of international efforts aimed at a broader harmonisation of substantive patent law".

This Kat has always been suspicious of grace periods, partly because he is not used to dealing with them and partly because he has always rather liked the old-fashioned notion of file first, disclose later -- particularly when coupled with the equally old-fashioned notion of the provisional patent application.  However, having said that, he has nothing against a grace period so long as the checks and balances to protect competitors are effective and so long as every patent-granting country has the same grace period, governed by the same rules -- to avoid the silliness of an invention being patentable in some countries but not in others by operation at national level of what is essentially an arbitrary rule: in reality, it matters little in the long run whether the grace period is six months, eight months or a year, but consistency in its operation in the real world matters greatly to people who finance the research and development that take patents from drawing board to industrial applications.

Grace and Favour here

Although some days have passed since David Kappos opened this year's Fordham Intellectual Property Conference, the impression which his keynote address made on me is one of the most powerful and enduring memories of an event which was not short of memorable moments. The US Under Secretary of Commerce for Intellectual Property, who is also Director of the USPTO, is a persuasive performer: his clarity of expression, coupled with his seasoned judgement, combine style and content in a most effective manner.

It seems almost churlish to take issue with a man who is both deeply knowledgeable and experienced within the field over which he exercises his qualities of leadership. However, without in any sense wishing to be iconoclastic or offensive, I feel that it would not be amiss to return to one issue which he raised in his address and on which the conference's traditional limitations of time prevented any lengthy debate: the grace period within which, having publicly disclosed an invention, an inventor in the United States (and, to be fair, in some other countries too) may file a patent application without loss of novelty.

Taking notes at the time, I jotted down the following phrases with which Mr Kappos garlanded the grace period. It was the "gold standard"; it constituted "best practice"; an "incentive to the inventive community", it also "creates employment". While a brief address cannot be expected to furnish either a raft of reasoning or reams of statistical evidence on which to base such claims, it seemed to me that these propositions were articulated as self-evident truths which admit of no contrary position.

If Mr Kappos is correct, then some big questions must be asked of all those very many countries in the world, including those of the European Patent Organisation, which do not -- through choice and the careful weighing of options -- provide a similar grace period. If the self-evident virtue of the grace period is there for all to see, by what stroke of wilful blindness or failure of comprehension do these other regimes persist in ignoring it? How have the businesses based in those countries, as well as US entities trading outside the grace period zone, managed to cope with the inconvenience?

These questions are no mere academic trifle. Mr Kappos has affirmed the commitment of his government and of his office to increased levels of legal harmonisation and practical cooperation throughout the world. It appears, though, that these advances are conditional upon all the non-grace-period regimes marching in step with the United States.

The present trend in IP circles is to call for law reform proposals to be evidence-based where possible (the UK's Strategic Advisory Board for Intellectual Property Policy -- SABIP -- is particularly enthusiastic in this regard, to its credit). Now here is an issue concerning which there must be evidence in abundance, so long as we can agree on the criteria by which it is culled and then evaluated. If a genuine will to achieve greater harmonisation and cooperation exists on all sides, and there is no objection founded in professional politics or self-interest, a trial and evidence-based evaluation of the two systems should be the next item on the patent reform agenda.

Great cat inventions here and here