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Q233 Grace Period for Patents Introduction Plenary Session September 9, 2013 Responsible reporter: John Osha 2
Aippi has considered the grace period in previous scientific work: Q75 Prior disclosure and prior use of the invention by the inventor Buenos Aires Congress, 1980 Moscow ExCo, 1982 Q170 Substantive Patent Law Treaty Lucerne ExCo, 2003 Background 3
Q75 Prior disclosure and prior use of the invention by the inventor Buenos Aires: Declared in favor of the principle of introducing a grace period on terms and conditions to be determined Referred question back to Executive Committee Moscow: Background Set forth terms and conditions for grace period 4
Moscow Terms A disclosure originating or derived from the inventor shall not by itself establish a right of priority but rather shall not be considered as part of the state of the art as against the inventor or his successor in title if it occurs within the grace period Such disclosure shall include all acts of disclosure to the public by means of a written or oral description, by use, or in any way, not withstanding where such disclosure takes place The grace period shall apply to patents of invention, inventor s certificates and utility models 5
Moscow Terms (cont d) The grace period shall be six months preceding the filing date of the patent application, or, if a Union priority is claimed, the date of the first filing according to Art. 4 of the Paris Convention The burden of proof shall be on the applicant or patentee to prove that such disclosure originated with the inventor or was derived from the inventor The inventor or his successor in title shall benefit from the grace period without being required to deposit a declaration of such disclosure 6
Resolved: Q170 Substantive Patent Law Treaty (2003) The term for the grace period shall be 12 months before the filing date or, if a priority is claimed, the priority date, i.e., the patent application shall be filed no later than 12 months after the public disclosure coming directly or indirectly from the inventor A declaration by the applicant confirming that he is entitled to benefit from such grace period may be required 7
Other current events Background AIA in United States Amendments to grace period in Japan and Korea Tegernsee Process 8
Scope of Question Revisit all issues related to grace period in light of current events Issues include: Term Date from which grace period is calculated Scope of grace period By inventor, joint inventor, or applicant Intentional versus unintentional By a third party derived from inventor Requirement for and timing of declaration Burden of proof issues Policy issues and balancing the public interest 9
Group Reports The Reporter General has received Group Reports from 42 countries: Argentina, Australia, Austria, Belgium, Brazil, Bulgaria, Canada, Chile, China, Denmark, Egypt, Estonia, Finland, France, Germany, Greece, Hungary, India, Indonesia, Israel, Italy, Japan, Malaysia, Mexico, Norway, the Netherlands, New Zealand, Peru, the Philippines, Poland, Portugal, Rep. of Korea, Romania, Singapore, South Africa, Spain, Sweden, Switzerland, Trinidad & Tobago, Turkey, the UK, and the United States 10
Observations from GRs All GRs indicate a grace period of some type is provided in their jurisdiction All GRs indicate that harmonization in this area is desirable Several note that harmonization in this area is more important than the actual details of implementation Majority of GRs support 12 month term versus 6 month term 11
Observations from GRs Strong majority of GRs support calculation of grace period from priority filing date (where applicable) Majority of GRs support scope of grace period to cover any intentional or unintentional act of inventor / successor in title Noted exception for patent office publications Majority of GRs would include acts of third parties within grace period, if third party learned of or derived invention from the inventor 12
Observations from GRs Significant disagreement was noted in GRs as to a requirement for a declaration or statement to invoke the grace period, and the required timing and level of proof 13