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Autumn in Rochester, New York.

(Autumn in Rochester, New York.) Will the 12-month patent filing grace period become a thing of the past??

Most of us who grew up in the U.S. often heard the wise saying “to each his own” from our elders. So, while we might adore some of our own American quirks- like putting ice in everything we drink (well, maybe not beer…), 4th of July parades, free Coke refills when we’re dining out, and working like crazy (thanks, Thrillist)- we understand that our way of doing things isn’t for everyone.  But what, you ask, does this have to do with patents??

Well, the U.S. Patent system also has (and had) some distinctly American quirks. For example, the U.S. was once the only country in the world to have a first-to-invent patent system, rather than a first-to-file system. That, however, has changed under the America Invents Act (“AIA”), and the U.S. now has a first-to-file patent system. Another example is the duty of disclosure. Under this duty, applicants and their attorneys must supply the Patent Office with any prior art, of which they are aware, that is relevant to patent applications which they have filed. Only the U.S. imposes this duty on applicants.

It’s true that five different Americans might have six different opinions as to the merits of the first-to-invent system, the duty of disclosure and other quirks of the U.S. Patent system. But the rest of the world has spent many, many decades pushing for what is known as “patent harmonization,” i.e., getting different countries’ patent systems and laws- including the United States’- more in line with each other.

It’s not surprising then, that the U.S. patent system’s ‘grace period’ might also be on the chopping block. As the USPTO describes it, the grace period refers to a time before a patent application is filed, “within which certain disclosures of the invention will not impair the applicant’s ability to obtain a patent” (see e.g., USPTO public hearing transcript from March 2013, here).

According to the USPTO, there are many policy reasons for providing a grace period. One is that it allows an inventor to avoid a harsh penalty, the permanent loss of patent rights for what may have been an accidental disclosure of the invention. Another is that it allows earlier dissemination of new technologies and research results than would otherwise be the case in a system without a grace period where the public would have to wait until the application is eventually published.

A third and very important reason is that it allows applicants to test the market for the invention before filing, or to attract venture capital funding before undertaking the considerable expense of preparing and filing the application. For a fabulous and in-depth analysis (that is actually quite readable) of this aspect of the grace period, see David Boundy and Matthew Marquardt article re, here.

As explained by Charles Eloshway, Senior Patent Counsel for Policy and External Affairs at the USPTO, there are some arguments against a grace period, too. One criticism is that, generally, the grace period increases uncertainty on the part of third parties. For example, third parties that see a disclosure of the invention, might not know for some length of time thereafter whether that disclosure is the subject of a later filed patent application.

According to Mr. Eloshway, the grace period is perhaps the single most important area of substantive patent law remaining to be harmonized following the AIA. While the AIA maintains a 12- month grace period that has long been a fixture of U.S. law, other jurisdictions like Europe provide only a very limited grace period covering disclosures at “World’s Fair” type international exhibitions. Or like Japan, provide a grace period of fairly broad scope, but of shorter duration.

Some organizations, such as the American Intellectual Property Law Association, appear to be supporting harmonization, but in the sense that other countries incorporate the same type and length of grace period that the U.S. now employs.

While it’s not yet clear what changes may come to the U.S. version of the grace period, it certainly is clear that changes may be on the way. On November 19, 2014, officials from the USPTO, stakeholders, WIPO, the JPO, the EPO and the U.K. Intellectual Property Office met to discuss patent harmonization, with the grace period being specifically mentioned as a “key examination issue” that currently lacks harmonization, resulting in “a barrier to more efficient and effective reuse of work.”

What is your opinion about the U.S. patent system’s 12 month grace period? We’ll continue to keep you posted on new developments. Click on the links below  to watch “Group B+’s” (the group in the World Intellectual Property Organization (WIPO) of which the USPTO is a member) roundtable or to Read Deputy Director Lee’s remarks to the heads of Group B+ offices at WIPO, September 23, 2014 in Geneva, Switzerland. Link to Roundtable on International Harmonization of Substantive Patent Law; Link to watch the webcast.

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