Substantive patent law harmonisation: TJQ consultation

In our July patent newsletter, we presented a first review of the TJQ, concluding that the majority of European respondents to the survey would appear to accept an internationally harmonised safety net grace period, including mandatory prior user rights arising until the priority or filing date, as part of a harmonisation package comprising also classical first-to-file, 18 months publication and possibly also conflicting applications. We also noted a certain flexibility within European users for the change that would be required to reach this level of harmonisation.

As promised we return to the finding of the TJQ in order to compare the user data collected in Europe, the US and Japan for each of the four fundamental issues of harmonisation.

1. Grace period

Whilst the majority of the respondents in Japan and the US supported a grace period, only a slim majority of European respondents were in favour (78% Japan, 79% US, 54% Europe).

There were also divergences in the understanding of the role, systemic importance and optimal scope of the grace period, across the three regions.

For example, US and Japanese respondents held a positive opinion on the goals of the grace period: namely that grace periods should be established because they are user-friendly for SMEs or because they encourage early publication of inventions.

'Safety net' grace period

In contrast, European users held a more negative opinion, finding that grace periods may undermine the legal certainty of the patent system or may complicate the patent system. European users were also in favour of a 'safety-net' grace period, ie, only applying to disclosures emanating from the applicant. Japanese and US respondents were, however, less keen (16% Japan, 28% US, 49% Europe).

Duration and start of grace period

Unsurprisingly the preferred duration of a harmonised grace period then reflected the systems that are currently in place: 65% of Japanese and 57% of European respondents favoured a six month grace period, while 65% of US respondents favoured twelve months.

However, the majority supported the term of the grace period being computed from the priority date (63% Japan; 64% US; 71% Europe).

Internationally harmonised grace period

There was also a convergence in the responses as to whether there should be an internationally harmonised grace period (85% Japan, 84% Us, 83% Europe).

Although this does not necessarily indicate that there should be a grace period per se: six respondents in Europe stated that a 'harmonised grace period' should be the absence of such a grace period.

2. 18 month publication

Most respondents agreed that all patent applications should be published at 18 months (Europe: 92%; US: 84%; Japan: 86%).

The majority of respondents (Japan 95%; US: 86%; Europe: 95%) also agreed that there should be no opt-out exception as is currently provided in the US.

In addition, the majority of respondents believed that 18 months is reasonable for applicants (Japan: 83%; US: 75%; Europe: 85%). There was, however, a shift for whether 18 months is reasonable for third parties (Japan and Europe only 70% and 49% US). Most respondents indicated that 18 months was too long for third parties.

The vast majority of US (79%) and European (86%) respondents indicated that search and/or examination results should be available in advance of publication.

Only 46% of Japanese respondents agreed, with those opposed to this requirement highlighting concerns that it may lead to an increase in application fees.

Despite this agreement, respondents attached varying levels of "importance" to the harmonisation of publication. American (62%) and European (56%) respondents were most likely to deem harmonisation as "important", and an additional 24% and 40% respectively deemed it to be "critical". On the other hand, Japanese respondents were fairly evenly split as to whether harmonisation of publication regimes was "critical" (48%) or "important" (47%).

The fact that only 25 of 675 respondents overall signalled that harmonisation of publication regimes was "not important" indicated continued interest in this issue.

3. Treatment of conflicting applications

As discussed in our previous article, Japan, the US and Europe all deal with conflicting applications differently. There are also differences as to the date at which PCT applications enter the secret prior art.

Despite these difference, conflicting applications were found to be relatively infrequent in all jurisdictions: 79% of Japanese, US and European respondents reported frequencies of 1 in 100 applications or less. The rate of self-collision was even lower: 85% Japanese, 81% US and 85% European respondents reported rates of 1 in 100 applications or less.

Nevertheless, the vast majority of respondents in all three regions consider the harmonisation of the rules on conflicting applications to be either critical or important (89% Japan; 91% US; 83% Europe).

The most interesting issue from a harmonisation perspective was exploring the users' perception of best practice.

As would be expected, most users displayed a marked preference for their own system: 65% of European respondents, 77% of Japanese respondents, and 49% of US respondents.

In dealing with PCT applications, there was no consensus on the date at which PCT applications should enter the prior art. However, a sizeable proportion of users appeared willing to support policies different from those reflected in their own national law.

4. Prior use rights

Prior user rights are provided for by the different national patent legislations, and are considered by some to constitute an essential element of the definition of a safety net grace period. Unfortunately, the empirical data gathered in this section of the TJQ was not considered to be sufficiently reliable to allow the drawing of any detailed solid conclusions.

Generally, however, the majority of Japanese and US respondents believed that inventors making use of the grace period should be shielded from prior user rights accruing to third parties having derived the invention from them, even in good faith. This is in line with the policies of their respective national laws.

Conversely, in Europe a majority of respondents believed that prior user rights should be defined so as to protect third parties in good faith prior to the priority/filing date as well as operate as a disincentive to pre-filing disclosure.

These results therefore suggest that there is a divergence in the understanding of the systemic function of prior user rights in a grace period context.

As far as the critical date for the accrual of prior user rights is concerned, the majority of respondents in all jurisdictions supported prior user rights being available under the filing, or if applicable, the priority date of the patent application against which they arise, whether or not there is grace period. The majority of respondents in all regions were also opposed to exceptions to prior user rights being provided.

The vast majority of respondents in all three regions considered the international harmonisation of prior user rights per se to be important or critical.

European respondents considered such harmonisation to be even more important if the international harmonisation of prior user rights is considered within the context of a grace period.

Summary

There are clearly a lot of issues to be settled before international harmonisation of substantive patent law can be realised. There are for example many divergences of opinion just between European, US and Japanese users and often a preference for the status quo.

There does also, however, seem to be a general agreement that harmonisation of the grace period, 18 month publication, conflicting applications and prior user rights is important if not critical. This should bode well for future consultations on international harmonisation of substantive patent law.

Useful link

More information on substantive patent law harmonisation, the Tegernsee process and the TJQ can be found on the EPO website: http://dycip.com/patentlawharmonisation