SPLT Art. 9 Grace Period. Thomas D. Seuß

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1 SPLT Art. 9 Grace Period Thomas D. Seuß

2 Historical Development Paris Convention Revision Congress (London) 1936 Introduction of Grace Period into German Law 1963 Strassbourg Convention 1976 European Convention Discussions on Law Treaty Discussions on Biotech Directive Discussions on Reform of Employees Inventions Act (Germany) Discussions on EPC Revision (Expert Opinions Straus, Galama) AIPPI ExCo Meeting Lucerne 2003 Resolution on SPLT

3 Current European Situation Absolute novelty requirement: invention must not be published before the filing date of the patent application...made available to the public by written or oral description, by use or in any other way... inventor A patent filing inventor A EP t

4 ermany Grace period (Neuheitsschonfrist) excemption for inventors Description or use of the invention within 6 months preceding the filing date shall not be taken into consideration if it is based on the conception of the applicant or his predecessor in title

5 troduction of a grace period 1 ) Current european situation patent filing inventor A EP months 0 months ~7 years t 2 a) With grace period Publication author A patent filing inventor A EP months 0 months ~7 years t

6 Introduction of a grace period 2b ) With grace period Description or use [...] shall not be taken into consideration if it is based on the conception of the applicant [...] if A s is based on B s invention EP author A inventor B if A s is independent of B s invention EP months 0 months ~7 years t right / validity of patent depends on the person / entity publishing the invention and its relationship to the inventor

7 Advantages of Grace Period for ee right can be saved in case of - unwanted - public testing - market success Late filing may save money (academia and SMEs may use the grace period to save money / delay payments) Invention can be published even if patent application is not already filed

8 Disadvantages of Grace Period for ee prior use rights (see example) risk of stipulated third party lack of novelty in countries not providing a grace period information of competitor risk that later improvements may not be patentable (see example)

9 xample: Radiolabeled Antibody Antibody Linker Chelator Radioisotope Antibody Linker Chelator Radioisotope Problem: chelate bonding not strong enough Antibody Linker Improved chelator Radioisotope EP EP lack of inventive step in view of - 6 months 0 months patent filing 1 12 months patent filing 2 t

10 xample 2: Radiolabeled Antibody Use of radiolabeled antibody for the diagnosis of cancer Use of radiolabeled antibody for the diagnosis of cancer EP Use of radiolabeled antibody for the diagnosis of cancer - 6 months -1 months 0 months patent appl. patent appl. t Manufacturing of radiolabeled antibody for the diagnosis of cancer Right to practice invention (even after grant of patent)

11 Disadvantages of Grace Period for ee prior use rights risk of stipulated third party lack of novelty in countries not providing a grace period information of competitor risk that later improvements may not be patentable applies generally to early

12 Balance of Rights: ee vs Public ee Public discloses information learns from disclosed information receives monopoly obeys monopoly (by making sure that no patent is infringed by its activities) has right to enforce patent has right to offend patent Prerequisite - Clarity of patent right: what is claimed what is not claimed what is prior art who has which rights

13 Grace period from a third party point of view 1 ) Current european situation patent filing of patent application EP months 18 months 2 ) with grace period 18 months patent filing of patent application EP months 0 months 18 months 24 months extension of waiting time

14 race period from a third party oint of view author A patent filing inventor B of patent application -6 months 0 months 18 months Questions: Is of A excempted from prior art? Is of A based on B s conception? etermination Problems (examples): : typos: e.g. Radüchel, Raduchel, Raduechel, Radeuchel : name changes: e.g. U. Willner U. Seuß : relationship between author and inventor How are the facts being determined?

15 Advantages/Disavantages balanced? ee Advantages prior / later filing possibilities Disadvantages prior user rights risk of 3 rd party disclosure competitor information Public stimulation of innovation Determination problem

16 Opponents (mostly Industry) position Organizations, like EFPIA, BDI, VCI, VfA do believe that 1) Introduction of grace period leads to high number of s prior to patent filings (especially from academia and SMEs) 2) Advantages of grace period for applicant/patentee do not outweigh disadvantages for public (especially determination problems)

17 iscussed compromises all s prior to applications have to be named with patent filing burden of proof for right to grace period is with applicant/patentee applicant/patentee has to declare details of prior s and relationship to author delay of of patent application (currently 18 months) is cut short new (short and easy) process of determination of right to grace period is introduced

18 AIPPI s position AIPPI adopted a resolution in Moscow 1982 (Q75) that a grace period should be introduced on an international basis AIPPI followed the discussion concerning the grace period and recognizes that some concerns have been expressed that have to be taken seriously and have to be adressed AIPPI conducted a survey in 2003 that indicated that the members of AIPPI are (still) in favor of the grace period but wish to limit legal uncertainties as much as possible by introducing additional measures AIPPI is working on a new resolution to be discussed and adopted during its world congress in Geneva (19-24 June 2004)

19 Proposals of AIPPI survey (to be published) Grace Period of 12 months prior to priority date for all kinds of s Applicant/ee has to declare that s have occurred prior to filing together with application within 1-16 months from filing date on request (after disclosure of such s) Applicant/ee has to to provide details of s having been made prior to filing If applicant s/patentee s declarations on prior art are wrong those s become prior art applications should be published 18 months after filing term should be 20 years from filing date

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