AIPPI: PATENT HARMONISATION
Working towards consensus
Governments and NGOs have both been involved in efforts towards harmonisation for two important aspects of patent law—the grace period and prior user rights. Jonathan Osha, deputy reporter general at the International Association for the Protection of Intellectual Property (AIPPI), reports.
disclosures of the invention, either by the inventor or by a third party, do not count as prior art that is applicable to the application. T ese types of disclosures are also sometimes referred to as ‘non- prejudicial’ disclosures. Most countries have laws recognising a grace period of some form. However, the types of disclosures that
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would be covered by the grace period, the steps required to invoke the grace period and the term of any applicable grace period all vary substantially from country to country. T erefore,
grace period generally refers to a length of time before the fi ling date of a patent application during
which certain
Aiming for harmonisation T e Tegernsee Group,
formed in 2011 to
consider the state of aff airs concerning patent law harmonisation, comprises representatives from, and the heads of, the intellectual property offi ces of Denmark, France, Germany, Japan, the UK, the US, and the European Patent Offi ce. At the group’s fi rst meeting in July 2011, the grace period and prior user rights were two of six topics identifi ed as being key to the substantive patent law harmonisation process. During the group’s second meeting in 2012,
it is frequently the case that a
disclosure that would be protected by the grace period law of one country is not protected by the grace period law of another country, resulting in a potential loss of rights. T e practical eff ect of this, at least for patent
owners wishing to preserve the opportunity to protect their rights in all possible countries, is that the grace period law of the most strict country in eff ect sets the standard that patent owners must meet for all inventions. Similarly, nearly all jurisdictions have laws
that recognise the rights of a valid prior user as an exception to the otherwise exclusive rights of a patent owner. While rarely invoked from a statistical perspective, prior user rights are nonetheless viewed as an essential element of a properly balanced patent system. In this context, ‘properly balanced’ means an appropriate balance between the patent owner’s rights under a fi rst-to- fi le patent system and the lawful continuance of an activity that has been carried out in good faith since before the date of such patent fi ling. As with the grace period, current national
laws governing the scope and application of prior user rights vary signifi cantly from country to country, making reliance on any standard virtually impossible, particularly for international applicants.
it was decided that fact-fi nding studies on four topics would be carried out: the grace period; prior user rights; 18-month publication; and treatment of
confl icting applications. T e
meeting mandated a group of experts to conduct these studies and prepare reports on each of these topics, which were completed in late 2012. User consultations were
then conducted
throughout 2013, resulting in a ‘fi nal consolidated report’, approved by the fi ſt h Tegernsee meeting on April 8, 2014. T is report, which contains a wealth of
information on user perspectives in the US, Europe, and Japan, concludes in part as follows: “T e vast majority of respondents in all three
blocs consider the international harmonisation of prior user rights per se to be important or critical. European respondents consider such harmonisation to be even more important if the international harmonisation of prior user rights is considered within the context of a grace period.” In addition to this, AIPPI undertook a
study of the international perspective on the grace period in 2013. As part of that study, AIPPI’s national and regional groups, which together with independent members represent more than 100 countries, were each asked to submit a report outlining the current status of
the law on grace period, if any, in their jurisdiction and to propose an international
20 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014
standard for harmonisation. Based on the 42 reports that were received, a draſt resolution was prepared for debate during the AIPPI executive committee meeting in Helsinki in September 2013. T e oral debate mirrored the national and
regional group reports in refl ecting diff erences of opinion on the main issues: duration of the grace period; types of disclosures covered; and the requirement for a statement or declaration to
invoke the grace period. However,
recognising that the need for harmonisation on the grace period is uniquely acute among IP topics, a consistent theme was the importance of harmonisation for the sake of harmonisation, over any particular details of term or process.
A balanced view Ultimately, the AIPPI executive committee passed, by a majority greater than 90%, a resolution strongly
supporting the grace period. T e
resolution (detailed below) provided for a balanced grace period applicable to disclosures made by the inventor and by third parties who derived the content of a disclosure from the inventor: 1) Internationally, a grace period should be
established in order to exclude from the prior art against the inventor or his successor in title, any disclosure to the public by means of a written or oral description, by use, or in any other way, made: a) By the inventor or his successor in
title, irrespective of whether such disclosure is intentional or not; or b) By a third party who derived the content
of the disclosure from the inventor or his successor in title, irrespective of whether such disclosure results from an abuse in relation to or was made against the will of the inventor or his successor in title. T e resolution specifi ed that
the grace
period should not apply to non-derived works, and also should not apply to offi cial IP offi ce publications:
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