Act gave the United States a first-to-file patent system, which
for most international patent owners and applicants was a
welcome step towards international harmonisation.
Many US practitioners, including then-USPTO Director
David Kappos, expressed the view then that it was now
Europe’s turn to reform, by reconsidering the
introduction of a US-style grace period.
However, there has long been resistance to change in Europe,
and the grace period remains one area where national laws
diverge greatly: most (but not all) European states do not have
one; countries such as Japan and Russia have a six-month
period; while the United States, Australia, Canada and others
have a 12-month period (see this helpful
guide by UK patent attorney firm Mewburn Ellis for more
Last year, though, that resistance seemed to be softening.
At its ExCo meeting in Helsinki, the AIPPI (which has a strong
representation from Europe) passed a
resolution favouring the establishment of a 12-month grace
period covering "any disclosure to the public by means of a
written or oral description, by use, or in any other way" made
by the inventor or a third party.
This year, in Toronto, a further
resolution was passed on prior user rights.
Tegernsee group (comprising representatives of Denmark,
France, Germany, Japan, the UK, US and EPO) identified the
grace period and prior user rights as areas for harmonisation
at their first meeting in July 2011.
report published earlier this year, the group (pictured
left) noted that while Japanese and US users favour the grace
period, it remains controversial in Europe: one survey saw
respondents almost equally split for and against a grace
period, while in Germany 61.5% were against. Moreover, the
report noted that "there are divergences in the understanding
of the role, systemic importance and optimal scope of the grace
period, across the three regions".
The report concludes this work cycle, but the so-called B+
group of countries – led by UK IPO chief executive
John Alty – will continue to work on the issue. The
question is: is it a priority for patent applicants and owners
"There are divergences in the
understanding of the role, systemic importance and optimal
scope of the grace period."
I know some organisations, such as universities, are
strongly in favour, even in countries that do not have a grace
period at present (see this
study by Science Business). Others would like
harmonisation, but can’t agree on the details.
Others oppose any change at all.
It seems like this is an issue where there is little
incentive for governments to act, unless urged to do so by
those affected in industry. If patent applicants and owners
really want harmonisation, they need to make their voices heard
– otherwise the issue is likely to slip into the