Introduction Of A Grace Period In Europe 13/03/2018 by Intellectual Property Watch Leave a Comment Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) The views expressed in this article are solely those of the authors and are not associated with Intellectual Property Watch. IP-Watch expressly disclaims and refuses any responsibility or liability for the content, style or form of any posts made to this forum, which remain solely the responsibility of their authors. By Michael Kahnert, legal counsel, BIO Deutschland The protection of inventions is a cornerstone to encourage innovation as engine of economic growth. As one of the world‘s leading centres for innovation, the level of scientific and technological performance in Germany is very high, thanks to an excellent research landscape and a good technological and economic basis. But the global innovation competition is intensifying, and new competitors are seeking to enter international markets. However, Germany is falling short of its potential when it comes to leveraging technology to create new products. To enhance growth and prosperity, it is thus all the more important for Germany to develop and secure knowledge advantages, and to rapidly disseminate and apply new findings. The necessary foundations to enhance competitiveness and to create jobs with a reliable future include good education, strong basic and applied scientific research and a strong pace of innovation in industry and services. For Germany to succeed in key technologies and in lead markets, the country‘s innovation base needs to be expanded. And for innovations to become successfully established in markets, effective intellectual property protection must be in place. The creation of framework conditions that foster innovation is crucial to Germany’s success in international competition to attract business investment. First and foremost is the quick translation of advancements of research and technology – in key areas such as biotechnology – into market advantages for the companies behind the innovations. This requires a competitive model of patent law, particularly at the EU level, that strengthens patent protection while countering the rising amount of intellectual piracy such as counterfeiting and patent infringement. An often neglected component of an innovation-friendly patent law is to secure results from basic research for real-world applications. A loss of rights because of pre-filing disclosures due to fast publication of research results come up against the requirement of patent law to keep inventions confidential prior to the patent application. The introduction of a grace period in Europe, similar to what has existed for a long time in other economically successful countries (e.g. in the US or Japan), can provide swift and cost-neutral relief. Graced publications accelerate innovation by making information publicly available at early stages without denying patent protection. It also gives innovators freedom in regards of collaborations with universities in order to develop and commercialize the invention. The European patent system requires the inventor to file the patent application prior to revealing his or her invention to the public if he or she does not want to lose the novelty of the invention. A grace period is the period before the patent application, during which the applicant can disclose his or her invention, without its novelty being lost by that disclosure. This holds significant potential for Germany in particular, as its strong basic research capacity generates numerous new ideas. In order to convert these scientific ideas into applications for the end-user, it is necessary to adequately protect research results. With modern communication for example through social media channels the risk of leaking news of advances increases. At present, the discrepancy in the regulation of the general grace period among the world’s three largest patent offices, namely, the USPTO, the JPO and the EPO, makes this issue very complicated for inventors. Therefore it is clearly a harmonization topic. The importance of cooperation between small and medium-sized enterprises (SMEs) and large industrial companies is constantly growing in terms of overall economic significance. In recent years, life sciences ventures have witnessed a growth in strategic investments by established corporations – 60% of all innovations have their origins outside of large companies. This proportion increases to 82% in the case of new biological therapeutics. In a global economy, applicants’ patent strategies are necessarily global too. To foster international patent law harmonisation, a grace period should be introduced with the following key elements: Duration: 12 months Scope: Any prior disclosure of an invention does not destroy novelty provided that it was directly or indirectly made by the applicant or his legal predecessor Patent systems provide a legally enforceable right of exclusivity to inventors in exchange for disclosure. A grace period protects, especially in international cooperation, the inventor(s) against his/their own incautious disclosure and favours the quick circulation of inventions that would otherwise be kept secret. In Germany, a substantial number of potential patents from universities and research institutions is lost due to publication or other disclosure of relevant research results. The science organisations identify two conflicting expectations: On the one hand, science is expected to increase publicly available knowledge. On the other hand, science is expected to increase the economic effectualness of this knowledge. This creates a conflict due to the imperative nondisclosure of information relevant for patenting. Also, in innovative industry in which it is required to publicly test inventions before they are registered as patents, the existing regulation is an obstacle. A conclusion could be the introduction of a grace period in the German and the European patent laws. A grace period gives the inventors more flexibility to deal with different rules set by scientific publications and by the patenting procedures. In particular, it allows for seeking patent rights, without the fear of prior disclosure destroying the patentability and the scope of protection. But what are the effects on third parties? Third parties as a whole may also benefit from the grace period if prior academic disclosure through conferences and academic publications significantly accelerates the diffusion of knowledge. Furthermore, the early exchange of ideas tends to result in better patent application because of the enhanced knowledge flow. Michael Kahnert is acting Corporate Counsel at BIO Deutschland (Biotechnologie-Industrie-Organisation Deutschland e.V.) in Berlin since August 2008. From 2012 until 2014 he was also the Managing Director of EABP. Before that he worked as lawyer at the German Federal Labour Market Authority and in several law offices for insolvency law and civil law. Michael Kahnert holds a degree in law from the University of Rostock and successfully completed his legal clerkship in Berlin and Los Angeles. Image Credits: BIO Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) Related "Introduction Of A Grace Period In Europe" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.