According to Article 27 of the TRIPs Agreement, adopted in 1994, patents shall be available for any inventions provided that they are new and involve an inventive step (are non-obvious). However, that does not mean that WTO members may never grant patents for inventions that have been made available to the public before the date of filing of the patent application. Many WTO members, including the USA and Japan, provide a period of time before the filing date of a patent application during which disclosures of the invention by the inventor are not considered as prior art to the application. This period is usually called “grace period”.
In European patent law, however, apart from very narrow exceptions, there is no grace period. This means that an inventor who has made her invention available to the public, for example a few weeks before filing the first patent application, can get patent protection in the USA or in Japan but not in Europe. In other words, 25 years after the TRIPs Agreement there is still no harmonisation regarding a grace period for patents.
The current situation in Europe originates from the Convention on the Unification of Certain Points of Substantive Law on Patents for Inventions (Strasbourg Convention) that was signed in 1963 and constitutes the basis of the relevant provisions of the European Patent Convention (EPC).
Before the Strasbourg Convention entered into force in 1980, the German patent law and the German utility model law provided a grace period of six months before the filing date. Whereas the German patent law was aligned to the EPC and the Strasbourg Convention in 1980, the German utility model law did not only maintain the grace period but extended it: the grace period of the German Utility Model Act precedes the Paris Convention priority date. In Germany, today, filing or “branching off” a utility model application is often the last resort for inventors who have failed to file a patent application before publishing their invention. It seems to me that no negative experiences with the past German grace period in patent law and the current grace period in utility model law have been reported.
According to Joseph Straus, in his unsurpassable study “Grace Period and the European and International Patent Law: Analysis of Key Legal and Socio-economic Aspects” (Beck, 2001), the main, if not the only, reason why a general grace period was not introduced in the Strasbourg Convention was the concern that inventors could be tempted to become careless, which would be detrimental as long as a general grace period was not internationally available. Apart from the fact that the international availability of grace periods has increased in the last 56 years, the argument is not convincing anyway. The risk that some people might carelessly rely on the grace period as a safety net is not a good argument to provide no safety net at all.
The second most popular argument against a grace period in Europe is that it would enhance legal uncertainty for investments based on knowledge gained from disclosures which later surface as subject matter of a patent application. This is correct. However, since patent applications are published only 18 months after the priority date, there is always such an uncertainty. Besides, this argument seems to favour the follower over the innovator.
A general grace period in Europe would be especially helpful for academic researchers at public research institutions, who have to exchange their findings with other researchers and desire to publish their findings quickly. Today, even own published basic scientific findings and public testing of not yet finished inventions seriously endanger the validity of patent applications for inventions. The inventor is not rewarded for the invention just because he has made a formal mistake. If patent protection is not available because of such a formal mistake, it might be impossible to find an investor for producing and marketing the invented product.
Irrespective of the advantages of a grace period, as AIPPI resolved in 2013 after conducting extensive worldwide studies, harmonisation of the laws on grace period is more important in and of itself than any of the particular details of scope and term of the grace period.
Europe should not wait longer to contribute to such a harmonisation.