IN FAVOR OF THE GRACE PERIOD
Farag Moussa ©
President of the International Federation of Inventors' Assocations (IFIA)
AT THE HEARING
OF THE EUROPEAN COMMISSION
ON THE GRACE PERIOD
(Brussels October 5, 1998)
IFIA is in favor of a general
12-month Grace Period
IFIA is the only organization grouping
inventor's associations worldwide. Nearly 50% of our member countries are from Continental
Europe. Soon after its creation in 1968, IFIA was convinced of the advantages a Grace
Period could offer to inventors. These views were expressed in 1984 at an expert group
convened by WIPO during the first international forum ever organized on this topic. That
was 15 years ago.
IFIA's position remains the same today. We
are in favor of a general Grace Period. That includes: whatever the occasion may be, the
place or type of disclosure, and whether the said disclosure is made in writing, orally or
visually. We are also for a 12-month Grace Period, an essential period corresponding to
the general trend in most recent patent laws.
Let me be quite clear: IFIA has no intention
of encouraging premature disclosure of an invention. Our aim is to offer the inventor a
means of self-protection, limited in time, to prevent loss of the novelty of his/her
invention - and therefore of its patentability - following an early disclosure which was
non-voluntary or dictated by necessity.
On reflexion, I consider European inventors
are being held hostage. They are hostage to those agreeable to the idea of a Grace Period
in Europe, but only on condition that the USA accepts adoption of the first-to-deposit
system and abandons the first-to-invent system. Hence my desire to limit our discussion in
Brussels to the advantages and disadvantages of the Grace Period, and to avoid this
on-going and political debate, the sole result of which is to prejudice the interests of
the European inventors.
I would go so far as to state that if the
Grace Period did not exist in the USA, we would need to invent it for Europe alone. Why
not be original? This does not prevent IFIA from looking ahead, and continuing to struggle
now and in the future for the adoption of a general and universal Grace Period. In fact, I
plan to launch a worldwide campaign to this effect through our inventor associations after
Over 30% of patent applications by
residents are made by independent inventors
I have consulted inventor associations from
member countries of the European Union (EU), and the European Patent Organization (EPO)
which are also members of IFIA. With the exception of Sweden, all are in favor of the
Grace Period. I will return to the case of this member later.
To the question: Who do we represent in IFIA?
I reply: first and foremostly, the independent inventors who form the major group.
Although well aware of the limits to statistical interpretations, I can state with little
error that in EU/EPO countries, the independent inventors residing there (and mentioned in
patent statistics as physical persons) are the authors of more than one third of the total
number of inventions applied for by residents. Over 30% is quite an important figure!
Here are a few averages for the past two to
three years based on statistics I obtained from official sources (Letters from Patent
Offices of said countries and, in the case of France, the Didier Lombard report, Le brevet
pour l'innovation, Paris, 1998, pp. 42 and 130.):
Cyprus: 100 %
Ireland: 43 %
Austria: 41 %
Finland: 35 %
Sweden: 34 %
France: 30 %
United Kingdom: 26 %
Italy: 24 %
The case of Germany should be examined with a
critical eye because the official statistics for patent applications by residents show an
average of only 16% to 17% for applications by independent inventors. On the other hand,
in Norway, neither an EU nor EPO member, applications by independent inventors reach 52%.
The second group represented by IFIA - and
not included in the above 30% average mentioned for EU/EPO countries - is composed of
small and micro-enterprises, usually created by, or as a direct result of, an inventor
starting up his/her own business.
Many big industrial enterprises
originated from independent inventors
I know...I know, the word "independent
inventor" makes some people smile: a bunch of crackpots, they say - nothing more than
a group of egg-heads! They forget how many great discoveries and important inventions are
the brainchildren of precisely those very same independent inventors. They forget that a
great number of today's big industrial enterprises, and the thousands and thousands of
jobs involved, originate from independent inventors, who, more often than not, gave their
names to those enterprises.
You ask for an example? Here is the story of
a 35 year-old housewife resembling millions of others just like her. This German woman who
lived in Dresden was the author, in 1908, of an invention used by all of you who made your
own cup of coffee for breakfast this morning. I refer to the Melitta coffee-filter, or its
subsequent improvements. Frau Melitta Benz, the inventor, created an enterprise which
bears her name. The Melitta company today has 8,000 employees in 18 countries, with an
annual turnover of US$ 950 million.
Why the Grace Period is indispensable
In my view, nearly everything was said in
1984 on the Grace Period. It suffices to read the final document of the Committee of
Experts convened at the time by WIPO. Opponents to the Grace Period know perfectly well
the arguments developed in favor of the Grace Period and repetition won't make them change
their minds. I will therefore limit myself to recalling the major points out of order.
These concern voluntary or non-voluntary disclosures of inventions in the following cases:
1. - ignorance of law,
2. - need to test,
3. - search of financing,
4 - desire or need to make known one's invention through a publication or at an
5. - desire or need to speak publicly of his/her invention,
6. - disclosure of an idea while one is as yet unaware that it is a potential
Depriving the inventors of the Grace Period
is directly detrimental to their interests. The inventor is forced prematurely into patent
application. This blocks the invention at a stage where it might still be developed
advantageously, thus giving it greater chances of success. The inventor is obliged to
spend yet further sums on patenting.
Let no one say that patenting in Europe is
inexpensive! Patenting is not only paying application fees - although in the United
Kingdom, filing fees are very modest (nil since a few days). Listen rather to a statement
made by the Swedish institution Forskapatent, an institution which knows what it's talking
Forskapatent does not file patent
applications for all inventions disclosures it receives due to the high cost of filing
($6,000 to $10,000) in Sweden only.
Illusory Grace Period in the case of
international exhibitions Some assert:
A six-month Grace Period already exists in
the case of inventions presented in the framework of international exhibitions. They refer
to Art. 55(1)(b) of the European Patent Convention of 1973. I wrote to the EPO President
in person requesting the list of international exhibitions in 1998 which corresponded to
the definition given in that Article. Believe it or not, there was only one! The World
Exhibition of Lisbon on Oceans - at which no inventor participated, or was allowed to
participate even if he/she had so wished.
This provision under Art. 55(1)(b), found in
all the patent laws of EPO member countries, is thus an illusion. Pity the poor inventors!
Pity indeed the inventor who sincerely thinks he/she is protected by the Grace Period,
shows his/her invention at an international exhibition, ignoring the fact that once
exhibited, it can no longer be patented. Or pity the inventor finally understanding the
law at the last minute, who rushes to the nearest Patent Office to file an application
when the invention still requires perfecting. Last but by no means least, pity the poor
inventor, lost among these legal provisions, who abandons the idea of renting a booth at
Some countries grant a Grace Period
in the case of
public communications or technical trials
Certain countries provide a Grace Period for
communications issued to an audience composed of scientists. This is typically the case of
inventions made by researchers. In Europe, I can cite the patent law of Portugal; in Asia,
the laws of Japan, the Republic of Korea and the People's Republic of China. But
researchers from these countries can only take advantage of the Grace Period in countries
which offer the same conditions. Other countries provide for a Grace Period in the case of
technical trials, such as Spain and South Africa, for example.
The system of first-to-file is
perfectly compatible with
a general 12-month Grace Period
Let us return to the objective I am fighting
for with tenacity and determination, namely the idea of a Grace Period, general and
lasting over a period of 12 months, a period applied in every circumstance and in favor of
all who invent.
Usually, people refer to the case of the USA,
as an example. But there are many more. Canada, for instance, is a
classic example. Although Canada abandoned three years ago the first-to-invent system for
the first-to-file system, it maintained the Grace Period neverthless. I can cite other
examples from the American continent: Argentina, Brazil, El Salvador, Barbados,
etc. Or from Central Asia: Armenia, Kazakstan, etc.
But why look so far afield? It suffices to
look at Central and East European countries to discover that inventors benefit from a
general Grace Period of 12 months. These countries, at least nine in number, I mention in
alphabetical order: Albania, Belarus, Bulgaria, Estonia, Romania, Slovenia,
This list of 16 countries
with a first-to-file system should not be underestimated. It shows that the Grace Period
functions perfectly, in parallel with the system of first-to-file. It also highlights the
expansion, year after year, of the movement in favor of a Grace Period. It underlines that
many laws are inspired by Article 12 of the draft Patent Law
Treaty (PLT), the identical text on which European deputy, Mr Rothley,
has based his proposal in favor of a general Grace Period of 12 months for EU member
EU initiative is essential to the
achievement of a Grace Period
Many in this conference hall will uphold that
a Grace Period makes no sense unless applied universally - and they are right. The Grace
Period will achieve true meaning only if it is worldwide. And that is precisely what we
are seeking - a Grace Period to be adopted by every country in the world! That said, is it
necessary for members of the EU to wait for adoption until... let's say... Papua New
Guinea... also decides to adopt it?
Why not adopt a special Directive at the
level of the EU concerning the Grace Period? Why doesn't the European Union assume
leadership in this regard - leading finally to the universal adoption of the Grace Period?
"Educate" the inventors...
who are we kidding?
The Union of Industrial and Employer's
Confederations of Europe (UNICE) is totally against the Grace Period. As an alternative,
it proposes to "educate" independent inventors, the SMEs and researchers by
teaching them how the patent system works in general. But how does UNICE plan to finance
such a program? Who will pick up the bill? The paper presented by UNICE at the European
Patent Hearing of September 1995, in Munich, gave us a clue: It will not be the European
Patent Office (EPO), or national patent offices, as none can imagine applicants paying to
educate potential competitors. UNICE and the big industry it represents therefore hits the
ball back into the court of the European Commission and its member states. They can pay
the bill - if agreeable, of course.
Let's stick to hard facts and figures. The
Swedish Inventors Association (SUF) decided recently not to support the Grace Period. It
will continue, argued SUF, to pursue the efforts undertaken, already spanning several
years, to enlighten Swedish inventors as to their rights. For this educational program,
SUF has at its disposal SEK 7.5 million for the year 1998, equivalent to about US$ 900,000
or nearly $1 million. This amount covers the salaries of 28 advisers based in different
regions of Sweden, as well as costs related to meetings, courses, administration, etc.
Hypothetically, the example of Sweden with
its 9 million inhabitants can be extrapolated to all the members of the European Union.
The 15 countries presently members of the EU have a total population of around 370 million
inhabitants, they would need something like US$ 37 million per year, not a dime less, to
be put at the disposal of inventor associations, other than the Swedish association - US$
37 million that our associations of EU/EPO countries could put to good use, believe me!
That includes making known to our inventors all the secrets of the Grace Period which we
consider, and I repeat, as absolutely essential to their interests.
We would like to underline that this proposal
of UNICE is not new; we find it in the 15-year-old document of the WIPO Committee of
Experts of 1984. In response to the notion of educating inventors as an alternative to the
Grace Period, an answer was clearly given at the time:
.... frequently, and probably in the
majority of cases, inventions are disclosed prematurely not because of ignorance, but
because it was necessary in particular cases (for example, a disclosure which cannot be
confidential made to an interested person or for reasons of testing).
Some speak of the ignorance of independent
inventors, of SMEs, of researchers. But employee inventors working for large enterprises
and multinationals, have they a greater knowledge of patent laws? I sincerely doubt it. A
patent department belonging to an enterprise, with dozens, not to say hundreds of legal
people, is there to look after its own interests.
The other day in Geneva, I met Nicolas Hayek,
the well-known Swiss entrepreneur and famous creator of the Swatch - who describes himself
just like that: as "an entrepreneur and an artist." I am sure Mr. Hayek would
say like me: each to his own! Let's leave the inventors and the researchers to their
imagination. The legal profession we leave to their tomes of law.
The world is changing . . .
To conclude, I would like to say a few words
on the changes occurring in the world today.
Firstly, there are not only men inventors.
There are women inventors too. These shadowy figures previously excluded
from the world of inventions are now emerging more and more. And yet - many of them do not
share the same system of values established by men concerning the patent laws; in
particular the notion of secrecy, or that form of competition - the frantic race for
filing a patent. Frequently, women inventors, in fact women in general, are more inclined
to share. Women, by their very nature, communicate more easily, more openly; they like to
share their ideas, their knowledge. The Grace Period corresponds better to their nature.
Secondly, there is youth,
the future inventors - boys and girls- who are rising stars in the universe of invention.
Who can conceive organizing a contest or an exhibition devoted to young people, without
offering them a Grace Period? Without protection, their ideas may be stolen, more
especially so as, in general, youth are disinterested in the profit motive, the
exploitation and commercialization of their inventions. The same danger lies in wait for
works and prototypes conceived by students of technical schools or technological
faculties, in the framework of their final-year exams.
Thirdly, there are invention
exhibitions which are becoming more and more widespread throughout Europe.
Whether they be national or international, the Grace Period was conceived for them very
many years ago, but, as we saw earlier, has remained a dead provision until today. It
should be restored in the framework of a general 12-month Grace Period. Of course, this
applies also to innovation contests, more and more numerous in Europe and
Finally, there are also technological
parks, a relatively recent phenomena in Europe. The parks represent an
interactive world, a world where people communicate, where small innovative enterprises
help each other. How can they possibly develop without a Grace Period? Such a conception
borders on the ridiculous, not to mention the unjust.
Big industry applies the Grace Period
within their enterprise!
A technological park composed of some 20
small or micro-enterprises, will always remain much smaller than those giants of industry
that are the big enterprises, not to mention the multinationals. Yet it's a fact that
these giants apply the Grace Period inside their enterprise, inside their own system!
Their engineers consult each other. Their inventions are carefully tested, protected
behind four walls. Their specialists investigate potential markets. Their patent
departments look after the whole legal side, applying for patents at what they consider to
be the most appropriate time.
Internet presents endless
Today electronics such as Internet, e-mail
and the Web site have changed the face of the world in the same way as the invention of
moveable print revolutionized communication several centuries ago. A new environment has
been created. It has turned communication techniques upside down, eliminated distances,
abolished frontiers. A new culture - free, rapid, universal - where people share their
knowledge, their expertise, has been born. A tremendous interactive potential is
burgeoning on our planet Earth. Like it or lump it - none can stop it!
Where do our inventors stand amid all this
change? Through free access to information - and at a very modest price - Internet
undermines one of the basic foundations of the European patent system, namely, the notion
of absolute novelty with no exception, and that of secrecy. How is it possible that a
Grace Period is not seen as absolutely imperative?
Internet offers unlimited possibilities, and
we are only partially aware of its potentialities. For example, virtual exhibitions exist
already. One of our inventor associations, Hungary, launched last March an international
competition of inventions with a virtual jury, each member sitting quietly in front of
his/her computer screen somewhere around the world. Virtual prototypes (ah yes!) also
exist today. Prepared on Internet, they are then loaded onto a video cassette. The
invention can be seen in color, from all angles, animated, and with a running commentary
sometimes given to a background of music. From this video, the inventor makes copies which
are sent simultaneously to potential buyers - who are also, sometimes, competitors.
The meaning is clear: One day we will be
forced to say "Farewell! Adieu! Adiós!" to the confidentiality agreement so
difficult to obtain, in any case, by the independent inventor.
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