World’s Biggest Markets are Ready for the Coordination of Patent Systems

Authors: Birute Dauderiene, Patent Consultant at METIDADr. Jacekas AntulisAssociated Partner, Head of Patent Division at METIDA

metida10The harmonisation of national and regional patent systems is one of the most relevant matters in patent systems. Various differences in jurisdiction often inflict a lot of discomfort on inventors making claims in various countries: patenting methods must be explored, as well as various terms and the extent of acquired rights.

In September of 2011, the Patent Reform confirmed by the US (America Invents Act – AIA) raised a lot of discussion. This reform essentially changed most of patent system aspects. Some of them came into effect earlier, meanwhile others entered into force only recently, i.e. 16th March, 2013. The main changes that came into effect were considered in the meetings by a group of Tegernsee leaders which consists of the representatives of the US, Germany, Denmark, France, the UK, the European Patent Office (EPO) and Japan. It also contains Trilateral Commission which consists of the representatives of the US patent office, Japanese patent office and European patent office, as well as of the five largest intellectual property offices (The IP5 Offices) which consist of Trilateral, Korean and Chinese representatives.

In the European unitary patent system and the US patent reform, there are two new progresses from the past centuries which are hoped to help create effective international patent system. Therefore, common solutions are being sought which would help further harmonise and simplify patents’ security internationally, accelerate the commercialisation of innovative ideas and decrease both time and investments intended for the protection of patent’s rights.

In order to analyse these solutions, a group of Tegernsee leaders was assembled which has been obliged to examine the main four issues:

  1. The grace period
  2. Publication of applications
  3. Treatment of conflicting applications
  4. Prior user rights

The grace period

The grace period grants the inventor with benefits to submit an application during a certain period of time of an invention published earlier or demonstrated in an exhibition. This is especially important for the universities and other educational institutions which would like to produce presentations as soon as possible of a newly created and innovative product in various events, seminars, publish it in various editions in order to make it interesting for the society. However, the grace period complicates patent office’s work when explaining the terminology and the reasons of disclosure which extends the time for the analysis of the application.

Since the grace period lasts for 6 months in Europe and Japan, whereas in the US it is 12 months, a question arises – which of them is more optimal and how it should be best established. The European Patent Convention’s (EPC) 55th article states that while establishing the novelty “invention’s disclosure is disregarded if it took place earlier than six months ago until the European patent application submission date, and if the invention was disclosed due to: a) evident abuse in relation to applicant’s or their legal predecessor rights, or b) exhibition of invention in official or in officially international exhibition acknowledged by the International Exhibition Convention which was signed on 22nd November, 1928 in Paris and last time amended on 30th November,  1972.”

EPO considers that the grace period by EPC is described quite narrowly and clearly which can be figured out quite easily.  Therefore, accepting the new EPC 2000, 55th article was not discussed or amended.

Another discussion’s matter is whether a declaration should be provided while filing an application. European and Japanese applicants who use grace period must provide a declaration when filing an application, while according to AIA accredited by the USA the applicant is not obliged to declare grace period.

The third matter is disclosure conditions. European patents system acknowledges the grace period if the invention was disclosed in confirmed international exhibition which therefore is strictly restricted. In Japan and the US there are no restricting conditions on invention disclosure: the invention can be disclosed by the inventor, their accredited person or third-party individuals who directly or indirectly received information about the invention.

The fourth issue is the behavior with the invention which was created independently by the third-party individuals. In Europe and Japan an invention created by the third-party individuals is not considered as the grace period, however, it constitutes a technical level. The new US system does not consider this independently originated invention as an obstacle for the inventor to patent their creation.

The statistics of carried out surveys in Europe show that a certain number of participants support the grace period, however, some of them would cancel it. University surveys show that the majority propose contracting grace period to 3 months. Only a few analysed national or regional grace period application methods lead to a conclusion that in order to reach the harmonisation of a common international patent system it is necessary to establish grace period’s time and conditions which would help to establish the balance between the inventor/applicant and the third-party individuals.

In Lithuania, the information about invention’s promulgation is not a problem for the acknowledgement of invention’s patentability if this information was released during 6 months until the filing date of patent application, and if it was released by a person who wanted to harm an inventor or the successor of their rights, or the inventor or the successor of their rights exhibiting the invention in an international exhibition.

Subsequently, in Lithuania the applicants themselves cannot release any information about their invention until the filing date of the application. Sometimes this evokes problems: the product is being prepared for distribution or is being transported to be demonstrated in a common exhibition, however, the claim is not submitted. These misunderstandings mostly arise due to the unfamiliarity with patenting procedure. Those who have patented before, do not face any grace period problems.

The publication of an application after 18 months

The publication of the application after 18 months after the filing or the priority’s date is the usual procedure in a lot of patents’ systems worldwide. This period was established considering inventor’s and third-party individuals’ interests. 18 months is a sufficient period of time for the inventor to decide whether the analysis of their application should be prolonged or canceled. On the other hand, it is a sufficient period of time for the publication of the information on new technology. During approximately 6 months after the claim’s submission date, EPO prepares a report on patent search and a written opinion on invention’s patentability in order for the inventor to create a further patenting strategy as soon as possible. EPO states that this well-calculated period was established for the inventor to assess their invention’s ‘strength’ and to have enough time to cancel the application until the publication date and keep the invention as a commercial secret.

The statistics of various countries supplied by the group of Tagernsee leaders showed that the publications of the application after 18 months is applied in all national and regional patent systems. This action is important because after publication of the application the invention receives temporary protection even though this has its own advantages and disadvantages. The third-party individuals get acquainted with the invention and are not allowed to copy it, the inventor based on the groups of the published application can form licensed agreements. However, due to a detailed disclose of the invention, the inventor is at risk that its invention may be copied, the applicant loses the possibility of keeping the invention as a commercial secret. The applicant may apply for an earlier publication of the application, however, according to the provided statistics during the past 3 years, only a small part of applicants wanted to publish an application earlier than 18 months: EPO – 0.1 %, UK – 2.5 %, FR – 0.52 %, US – 5.93 %. The tendency shows that this number is decreasing.

In Lithuania, a patent application is also published after 18 months after a patent or priority filing date. The inventor can file the patent application requesting that it could be published earlier (it is usually announced not earlier than 6 months after the application filing date). Since in Lithuania no essential expertise is conducted, the applicant is usually interested in publishing the application and receiving the patent as soon as possible.

The treatment of conflicting applications

The common rule for patent rights defines that for the patentability criterion the novelty of the invention and the technical level are established in accordance with everything that is announced worldwide until an application or priority filing date (applying the grace period in certain circumstances). Thus, it becomes not sure how to treat the applications the inventions of which are similar or even identical in nature and filing date of which is earlier than of the analysed one, although they are published later. How is this harmless disclosure assessed in regards to the novelty of invention or its levels In Japan, the US and EPO, problematic applications are analysed in different methods, however, it still has not been decided which one is the best.

According to EPO, European applications filing dates of which are earlier than those of the analysed ones and yet they have been published the same day or later, are analysed assessing the novelty of the claim in accordance with EPS 54th article, part 3 in which it is stated that “the technical level is considered to be the content of the European patent applications filing date of which is earlier than that of applications, and which were announced the same day or later“.

However, conflicting claims are not treated assessing the technical level in accordance with EPS 56th article which states that “the invention is considered to be of a technical level if considering the technical level it is not obvious for a specialist in the respective area. If the documents also belong to the technical level that are indicated in 54th article, part 3 assessing if the level of the invention exists, these types of documents are not considered”.

Japanese patents’ law quite strictly defines the status of the conflicting applications: the patent for the invention which is identical to the earlier filed one even though published later, will not be issued. According to the US practice, this problematic application may be considered to be corrosive to the novelty. It must be noted that in the US there is Hilmer’s doctrine according to which foreign country’s priority application is not assessed as meeting the respective invention level if the problematic application was filed in the US with the priority of a foreign country, Lithuanian patent law does not predict such reservations because essential expertise is not conducted in Lithuania.

Based on statistics, these claims do not constitute a big number, however, the issue remains relevant. For example, EPO problematic applications compose 3 %, German ones about 2 % and Japanese ones about 1 %. EPO along with Japanese and the US patent systems support the notion that problematic claims must be analysed assessing the novelty, but they must be assessed as a secret in accordance to the technical level.

Prior user rights

The prior user right is the right of the third-party individuals to continue using the invention if it was used until patent application filing date. The main goal of the prior user rights is to set the balance between those who hold to the principle to file the application at first and those who without patenting implement and use innovations. The prior user right is defined in the acts of the national law in which it is essentially described the same, however, the conditions of its origin are different.

In Europe, prior user rights are described as a right to use the invention without infringing the rights of patent proprietor if the individuals who used or were ready to fully use the invention until application filing date, but when it is requested for a priority to be granted until application priority date, not considering patent’s proprietor, has used the invention or intended to use during the preparation time. Prior user right does not extend to license issuing, however, it can be transferable along with the business, company or its part which owns the business. The acts of national laws of European countries’ anticipate that the early use must take place before the patent’s or priority’s application filing date. The same regulations are applied in Lithuania. In Japan, essentially the same conditions of prior user rights are affective and the person can use patented invention lead by honest and fair principles whose main attitude is that the early use right is not granted to those individuals who received information or are otherwise affiliated with patent’s proprietor. European countries’ acts of national law do not strictly describe how to confront a stolen idea, however, most of the time the applied principle of an honest competition helps to restrict the prior user rights. Most of the changes regarding prior user rights have been confirmed in the AIA initiated by the US which grants these rights not only to the business methods but also encompasses all technology implemented in the US internal market. Prior user rights must emerge at least before a year after application filing date or counting from the beginning of the grace period. In the US, the prior user right is granted only for the inventions already in use, meanwhile in Europe the preparation to use the invention is possible.

The arrangement of all the previously mentioned matters on the national/regional level is, of course, a job requiring a lot of time and effort. Firstly, it will help ascertain how the biggest markets of Europe, Japan, and the US and other biggest markets across the world are ready for the changes in patent area. Secondly, it is hoped that patent system harmonisation process will decrease the assigned time for receiving the patents, will eliminate the duplication of some of the patent procedures patenting the same invention in several countries, will accelerate the analysis of applications while also providing the opportunity to commercialise the innovations in the global market as soon as possible.

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