By Leon Allen | Monday, March 18, 2013

“When the facts change, I change my mind. What do you do, sir?” said John Maynard Keynes to a colleague challenging him for changing his position on an economic issue.

I’m with Keynes. The facts on the potential perils of a grace period in patent law have changed, and so I’ve changed my mind. When Australia introduced a 12-month general grace period ten years ago, I feared that the obvious problems would outweigh the expected advantages, and I resisted the change. A decade of experience has shown my fears were largely unfounded – and so I’ve shifted my position.

The main argument against a grace period is the increase in “uncertainty”, for both applicants and third parties. A grace period may give patent applicants a false sense of security, misleading them to think the local grace period will save them in other countries. More problematic is the increase in uncertainty for third parties – the normal 18-month delay in knowing whether patent rights may exist becomes up to 2.5 years.

The Australian experience has been that the concern of increased uncertainty is more theoretical than real. Inventors do not appear to have become more likely to disclose their invention before filing an application, and competitors do not appear to have become more constrained in their operations.

What is real, however, is the problem caused by the lack of international uniformity on the issue – and, in particular, by the absence of an equivalent grace period in the European Patent Convention. The Australian experience of no observed increase in pre-filing disclosures suggests that applicants won’t take advantage of a grace period unless it applies in all major markets. Until Europe adopts a grace period provision compatible with those in Australia, the US and elsewhere, the full benefits of the grace period will not be achieved.

Harmonising the grace period has been on the international patent law reform agenda for more than a century. Although the story to date has been one of constant failure, recent changes to the law in the US, Japan and Korea have added momentum to the movement.

An important development is the initiative of the Tegernsee Group of patent offices. Its September 2012 comparative study identified four issues on which development of an EPC grace period should focus: duration of period (6 or 12 months?), procedure for use (declaration/notification required?), type of disclosure graced (all applicant disclosures?), effect of intervening 3rd party disclosure (prejudicial to applicant?). While resolving these issues is not straightforward, it is possible. And, making sure they are resolved is important for all patent system users, both in Europe and elsewhere.

I’m hopeful that those who have resisted a grace period will see that the facts have changed – and will do what Keynes would do.

Filed under:Legal briefingPatents