Study Committee

Grace period for patents

Délai de grâce en matière de brevets

Neuheitsschonfrist für Patente

  • Main Task:

    To prepare a Draft Resolution to be presented at the AIPPI ExCo, Helsinki, Finland, September 2013

    Description of Working Question

    The recent adoption of the Leahy-Smith America Invents Act in the U.S. has provided an opportunity to restart long-stalled discussions on substantive patent law harmonization. The heads of the world’s five largest intellectual property offices, who refer to themselves as the IP5, have noted the importance of maintaining the momentum toward harmonization of patent laws and agreed to establish an expert panel to continue discussions. The so-called “Tegernsee Group”, which was formed in July 2011 and is comprised of the heads of the European, Danish, French, German, UK, Japanese and United States patent offices, is undertaking a comparative analysis of substantive patent laws, with a view to identifying and studying areas of patent law that can be substantively aligned. The grace period has been highlighted as one of four issues for near term focused effort. Equally, the Japanese Group of AIPPI recently surveyed the National Groups of AIPPI in order to identify those patent law harmonization issues that are considered to be most urgent. The grace period has been identified as one of these issues.

    Therefore, adoption of a grace period can be considered a key requirement in realizing international harmonization of substantive patent law. It is against this background that we propose to study the grace period for patents in the framework of a working question for Helsinki in 2013. AIPPI has acknowledged the necessity of adopting a grace period in principle in previous Resolutions (for instance in Q75 in 1980/ 1982 and in Q170 regarding the Substantive Patent Law Treaty [SPLT] in 2004). However, the specific conditions have not been studied in detail in the framework of a working question. The traditional AIPPI working method is well suited to conduct an in-depth comparative analysis of specific conditions of a modern grace period involving multiple countries. What should the ideal scope of the grace period be? How long should the grace period be? Should a declaration by the applicant confirming that he is entitled to benefit from such grace period be required? By studying these questions, among others, AIPPI hopes to make an important contribution to the current substantive patent harmonization discussions.

  • Chair: Thomas BOUVET (France)
  • Co-Chair: Carlo Maria FAGGIONI (Italy)
  • Secretary: Carolyn HARRIS (Australia)
  • Co-Chair: Peter SCHECHTER (United States of America)
  • Deputy Reporter General: John Osha