The draft of this Treaty covers in it's Art. 12 the so called international Grace Period of 12 months, set before the priority (in contrast to the Grace Period according to Art. 55 EPC ­ Grace Period of 6 months before the European filing date in case of obvious abuse). The Treaty was not adopted by the Diplomatic Conference in The Hague because of problems with the U.S. patent system of first to invent.

Now the Commission of the EU has taken an initiative to revive the idea of an international Grace Period. The Commission invited the organizations of the interested circles and individuals to a hearing on October 5, 1998 in Brussels (see enclosed time table).

The subject matter was introduced by 3 speakers:

• M. Alain Gallochat, Directeur juridique de l'Institut Pasteur, Paris
• M. Farag Moussa, President de la Federation internationale des assocations dÍnventeurs (IFIA), Geneve;
• M. Brian Yorke, Head of corporate intellectual property at Novartis International, Bale.

The first two speakers strongly supported the idea of the Grace Period whereas Mr. Yorke clearly expressed his rejection of the Grace Period. He therewith introduced the views of the later speakers from the chemical industry.

The majority of speakers supported the idea of an international Grace Period under the preference of only 6 months, some with the proposal of 12 months. The supporters did not propose any relationship between a publication and an effect of priority so that the previous argument of the opponents was not raised.

The remarkable experience of this hearing is the strong and unanimous opposition of the big chemical industry which was in the position of a minority in the hearing. One reason for this opposition is that in a patent system with a Grace Period it would be more difficult for the patent departments of chemical enterprises to require the inventors not to publish before the filing date. An early publication is often the strong desire of scientists working in industry, who want to establish a particular reputation in the respective science.

The main reason for the rejection of the Grace Period is an alleged legal uncertainty. In this context the following example was given:

• Publication of interesting subject matter by a third party.
  
  
• Desire of a chemical enterprise to copy the subject matter of this article.
  
  
• Waiting for 18 months in order to discover a corresponding patent application which could have been filed just one day before the publication date.
  
  
• Further waiting for the term of the duration of the Grace Period in case that after the 18-months-period no published patent application has been found.
  
  
• This additional waiting time is unacceptable for the chemical industry.
  
  

Another example for an alleged legal uncertainty is the following case which played a certain role in my own experience in the time when we had in Germany a Grace Period:

• A patent application or a patent is published, the subject matter of which is of interest for a competitor. He finds a publication anticipating the published protection right with a date within the Grace Period. However, the publication does not show any relationship to the applicant. The interested competitor is not sure whether the anticipating publication may be irrelevant because it stems from the applicant.

With regard to the first case, several proponents of the Grace Period have submitted their view, that the applicant who enriches the state of the art by the publication of his ideas deserves more care than the competitor who just wants to copy ideas from another party. An applicant, who submits his teaching to the public and uses the Grace Period in order to avoid the failure of his patent application does something which should be encouraged by our legal system. In contrast, the competitor who just wants to copy without submitting any new ideas to the public should not be supported; to do so would discourage early publishing applicants from informing the public about their new ideas.

With regard to the second case I had explained in my written submission the solution to request from the applicant a statement whether he is entitled to invoke the Grace Period with regard to the publication or not. If he would not honestly clarify the situation he would loose his rights to claim the benefits of the Grace Period. This was the way of this matter in Germany under our earlier Grace Period.

The arguments of the proponents of the Grace Period from the association of inventors was essentially to help the innocent inventor who publishes his invention without knowing that this would be destroy the novelty of a later patent application. Therefore, the Grace Period would particularly be an important help for the individual inventor.

In contrast thereto I had submitted the view that there are several branches of our industry in which new technical developments take place outside the factories of the inventors.

Examples:

1. Shoe machines, tested in shoe making plants;
2. Machines for the chemical industries, tested in chemical plants;
3. Agricultural machines, tested in the open air on the fields;
4. Sporting articles (windsurfers), tested in areas with public accessability;
5. Bandages, protheses, equipment for the treatment of joints, tested on patients in hospitals with the assistance of physicians.

In the conclusions of the hearing given by Mr. Waterschoot, he pointed out that obviously the chemical industry is unanimously against the Grace Period. Further, he acknowledged the majority of supporting voices and in particular the need of certain industries to bring new ideas to the level of a mature invention by testing which cannot be done behind closed doors but sometimes under conditions with public access, and their needs must be considered.

From the side of the chemical industry the proposal was submitted to introduce or use the system of provisional application. This, however, is a dangerous trap because an applicant relying on a provisional application may later find that his disclosure is not adequate for a good patent. This was clearly expressed by the representative of the EPO, Mr. E. Koch, who reported about the experience of the EPO where patent applications filed in a premature state would normally lead to an unsuccessful examination procedure because of lack of enabling disclosure.

My conclusion is that it will be difficult for the chemical industry to prevent the further discussion about the Grace Period. However, the chemical industry will continue to strongly fight against any initiative of the Commission. Therefore, it is necessary for the organisations of the interested circles being in favour of the Grace Period to urge the Commission to issue a paper, possibly a Directive, for the introduction of the Grace Period at least in the EU. It was determined in the discussion that only a worldwide Grace Period would make sense because a Grace Period limited to only some countries would be misleading and prevent applicants from obtaining patent protections in countries without the Grace Period. This is true but we live in Germany quite well with our international Grace Period in our Utility Model system because it gives applicants at least a protection in Germany. If the territory of the European Union or of the member states of the EPC would be prepared to introduce a Grace Period this would cover a big market (about which our politicians so favourably speak) and would be an example for other countries in the world to follow. It will of course be the best solution to go ahead with the WIPO Harmonization Treaty but excluding the religious war about first to file and first to invent in the United States. We live with the first to invent system in the United States and will have to continue to live with it. Nobody can say that our life under this system is only miserable. It is better to reach a satisfactory solution under the PLT for some important items of our patent system instead of hunting for the 100%-solution which is not possible for the time being. Therefore, it is my view to encourage WIPO to go ahead with the Draft Treaty including a possible reservation for the US to maintain their first to invent system in order to improve the situation of our applicants in a wide area of items of our patent system.