Monday, July 2, 2012

Amazing grace periods

Horses engaged
The horses have bolted
Intellectual property lawyers have all had one of those "oh shoot" moments. You have the best intentions to file a patent application for your client before an impending disclosure. And suddenly the invention is out there.

It can happen all kinds of ways. I've seen the organisers of an exhibition promote their event by running a front page story of my client's invention the week before the exhibition. I've seen the proceedings of a conference published online in advance. I have heard of cases where a peer review panel for a journal is not under a formal confidentiality arrangement.

In each of these cases it's a matter of salvaging some sort of intellectual property rights from a bad situation. Many countries offer what is known as a "grace period". A grace period allows an inventor to file a patent application under some circumstances even though the invention has already been disclosed.

The global view

Earlier this year I attended a good seminar on grace periods at the LES International Annual Conference in Auckland New Zealand. The presenter gave an overview of the America Invents Act and its grace period provisions.

There are grace period provisions of varying scope in the United States, Europe, Japan, China, Taiwan, Singapore, Republic of Korea, Russia, Australia and India.

The proposed law in New Zealand

New Zealand currently provides only limited grace period provisions. Patent law in New Zealand has been under review for the last 20 years. At the time of writing, we have the Patents Bill 2008 that is awaiting a second reading in Parliament.

The grace periods proposed in the Bill are not radically different to what we have now. Disclosure of matter constituting an invention can be disregarded under the following circumstances:
  • material obtained unlawfully or in breach of confidence from the inventor;
  • disclosure made in breach of confidence by someone who obtained the material in confidence;
  • communication to a government department;
  • display at a specified exhibition;
  • reasonable trial necessary to be performed in public.

What the public said

The Patents Bill has been through a Parliamentary Select Committee process. During the submission process three universites and two crown research institutes asked for a general grace period. These are (in no particular order):

There was a common theme among the submitters. The main points raised were:
  • major markets provide for a general grace period. Providing a general grace period in New Zealand would allow local applicants to compete more fairly on the international stage (Plant & Food Research, Auckland UniServices)
  • academic standing, promotions and funding are primarily assessed based on number of publications rather than patent applications. (Research and Enterprise-University of Otago, Lincoln University, AgResearch)
  • There is a tension between the need to publish early and the need to seek patent protection for commercial opportunities (Research and Enterprise-University of Otago, Lincoln University)
  • inadvertent publications, or publications based on a lack of understanding of the patent system still occur before the commercial position has been evaluated. (Research and Enterprise-University of Otago, Lincoln University, AgResearch)
  • A grace period would help with obtaining a commercial return (Research and Enterprise-University of Otago, AgResearch)

What the profession said

The New Zealand Institute of Patent Attorneys (NZIPA) argued for a general grace period. The NZIPA acknowledged that the provision of grace periods is not consistent around the world. A disclosure that may be disregarded in New Zealand may still destroy novelty in another country.

Grace periods should be regarded as a "last chance" to provide protection in New Zealand for an inventor who has inadvertently disclosed his or her invention. Grace periods should not encourage wilful early disclosure at the risk of jeopardising validity in other jurisdictions.

The NZIPA argued for a general grace period similar to Australia, Canada and the United States to assist New Zealand resident applicants in securing patent protection at least in New Zealand following disclosure.

The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) also advocated for a general grace period. IPTA highlighted the fact that a grace period was introduced in Australia on 1 April 2002. They said that:
'in the interests of harmonising patentability requirements between Australia and New Zealand, we submit that a corresponding grace period should be introduced in New Zealand. To do otherwise would result in a marked disconformity in the law of the two jurisdictions, such that a New Zealand national who publishes his invention prior to filing a patent application would be able to obtain a patent in Australia, but not in New Zealand.'
What the officials said

New Zealand officials disagreed with the submitters. In a departmental report they said that:
'such a grace period may have advantages for local inventors who only want to apply for patents in NZ. However a number of other countries have no grace period provisions; for those that do, there is no internationally harmonised grace period provision. This means that local inventors relying on a NZ grace period may lose their ability to obtain patents elsewhere.'
A separate briefing note observed that:
'[p]roviding a grace period in New Zealand may have the effect of encouraging local inventors to make their inventions public before filing a patent application. They may not appreciate that this might jeopardise their chances of getting a patent in other countries ... In light of this, there may be little value in providing for a general grace period in New Zealand'.
It seems odd to me that the briefing note focuses so much on the hypothetical local inventor yet pays only lipservice to the submissions of universities and research institutes and completely ignores the submissions of the patent profession in both Australia and New Zealand.

The briefing note was penned nearly three years ago in September 2009. Since then we have seen the development of policy around greater harmonisation between Australia and New Zealand.

If we were to adopt the position set out in the briefing note, isn't there a greater risk for Australian local inventors to 'jeopardise their chances of getting a patent' in New Zealand? This would suggest that the New Zealand grace period should at least be harmonised with Australia. Surely.

Photo courtesy of author Pomax under Creative Commons licence. 


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