Renewed Efforts Towards Harmonisation of Substantive Patent Law

The UKIPO recently opened a short consultation period on substantive patent law harmonisation initiatives in relation to the interrelated issues of grace periods, prior user rights and conflicting applications.

The consultation stems from September 2020 proposals by the Industry Trilateral (IT3), which was formed in 2003 for stakeholders to engage with the Trilateral Offices (EPO, JPO and USPTO) on substantive and procedural issues of patent law. IT3 is composed of representatives from four associations: American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), BusinessEurope and the Japan Intellectual Property Association (JIPA). The proposals concern the above three areas of substantive patent law as well as the definition of prior art and having applications published at 18-months from the priority date. Given there is currently significant patent law harmonisation in respect of the latter two issues the consultation is focussed on the three initially noted issues.

In the early 2000’s WIPO’s Standing Committee on the Law of Patents (SCP) made concerted attempts to formulate a Substantive Patent Law Treaty (SPLT), but this was dropped as an active work program in 2004 after a lack of consensus. In 2014 the IT3 started working on key elements of what could form a SPLT resulting in its proposals being released to a select group (Group B+) of industrialised nations at the delegation level. The consultation also takes into account various position papers on these issues by the patent attorney organisations AIPPI (International Association for the Protection of Intellectual Property) and FICPI (International Federation of Intellectual Property Attorneys).

Grace Period: Currently there are a number of variations for grace periods. Amongst industrialised countries or countries with moderate to high patenting activity the strictest grace period provisions are those in the EPC. Currently the EPC only allows novelty to not be affected by disclosures resulting either from displaying the invention at an officially recognised exhibition or due to evident abuse of the rights of the inventor / applicant / assignee and only if such disclosures occurred no more than 6-months prior to the patent application filing date. As recently discussed the EPO conducted a select stakeholder consultation on its grace periods. Given the high use of the EP in patenting activity, if the EPC moves to a more general grace period, then other countries with similar grace period provisions to the EPC’s may also move to a more general grace period as there will no longer be a risk in not matching the strictness of the EPC grace period provisions.

Many countries apply a general grace period in respect of any disclosures by the inventor / applicant / assignee or due to evident abuse of their rights. However, there is variation as to whether the grace period is for a period of 6-months or 12-months and whether that time period precedes the priority date or the filing date. The vast majority of countries with a general grace period apply a 12-month term, with just over a dozen jurisdictions applying a 6 month term. Of those applying a 12-month term the majority have that time period preceding the priority date, although more highly developed countries generally have that time period preceding the filing date.

Other grace period issues for consideration are whether the applicant needs to declare any such disclosures when filing the application or can they be made at any stage during the life of the patent. If no such declaration is filed should a third party who started using the invention before the filing date after being aware of a pre-filing disclosure be able to claim a defence of intervening user and continue to use the invention? Should third party prior uses within the grace period that are the same or significantly similar to the claimed invention be presumed to be due to a pre-filing disclosure by the applicant? If the applicant invokes the grace period when filing should the application be subject to any early or additional publication requirements?

Prior User Rights: The defence of intervening user just mentioned is a subset of prior user rights. Broader prior user rights are in general allowed for where a third party independently and prior to the priority or filing date either is secretly and commercially using the invention or has begun investing in the invention with the intention of commercially exploiting it. Prior user rights are considered an important part of a balanced patent system that encourages early filing and also recognises the freedom of an inventor to choose between patent protection and trade secret protection. In general the burden of proof is on the party claiming the prior user right. In addition to the defence of intervening user issues, other issues for consideration include to what extent the prior user can, post-filing, modify their use without infringing and whether the right is only available in the country in which the prior use or significant preparations therefore took place.

Conflicting Applications: Where different applications disclose common subject matter but one is filed before but published after the filing of the second application there is variation in how jurisdictions consider the first filed application affects the scope of the second filed application. Although there is increasing harmonisation in the determination being made on a ‘whole of contents’ approach, rather than just being restricted to the claims of the earlier application. Many countries follow the European approach where such secret prior art is only relevant for novelty, while the USA also allows it to be relevant for inventive step. In Europe there is no anti-self-collision provision, meaning an applicant’s prior but unpublished application can be prior art for a subsequent application by the same applicant covering the same or significantly similar subject matter. In the USA there is an anti-self-collision provision, which incentivises first-mover advantage.

Another issue for consideration is the prior art status of PCT applications filed within the secret prior art window. In Europe a PCT application filed within such a window of time only counts as prior art if it subsequently enters European regional phase. Other jurisdictions such as the UK, Japan and South Korea likewise only recognise such PCT applications as prior art if PCT national phase is entered in that country. The rationale for this being that if such regional or national entry is not made then there will be no double patenting to be avoided. However, for the USA if the USA remains designated when the PCT application is published at 18-months then it counts as prior art whether or not national phase is entered. Australia also applies the approach taken in the USA. In a recent New Zealand case on this point, amongst other reasons, it was argued that New Zealand’s patent legislation requires PCT applications to enter New Zealand national phase to count as whole of contents secret prior art. However, the Assistant Commissioner’s decision found New Zealand’s patent legislation on this point to be more in line with the approach taken in the USA and Australia.

Author: Quinn Miller

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