IMPORTANT LEGAL NOTICE - The information on this site is subject to adisclaimerand acopyright notice
 
Contact   |   Search on EUROPA  
European Research News Centre - Homepage
Graphic
Weekly Headlines RTD info magazine Diary Press releases Contacts
Graphic
image European Research News Centre > Research and Society > The controversial 'grace period'
image image
image image image Date published: 28/08/02
  image The controversial 'grace period'
RTD info 34
image  
   
 

Torn between their traditional concern to publish results and the growing tendency to patent anything which could find a commercial application, many researchers are calling for a 'grace period'.

   
     
   

Publish or perish - that has been the traditional scientific maxim, at least in the field of public or academic research. The publication of results in recognised specialist journals has always been seen as the key not just to the validation of research results and the dissemination of knowledge, but also to the career progress of researchers. The number of articles published forms the basis of a researcher's standing in the scientific community.

Researchers are nevertheless facing a dilemma. Before rushing to publish - which until now had validated new scientific knowledge - is it not preferable to begin by instigating the lengthy, complex and costly procedures leading to the legal protection of intellectual property rights (IPR) such as patents or utility models, with a view to the exploitation of future applications?

Paradoxically, given the characteristics of European patent law, the two approaches are mutually exclusive and researchers now find themselves in a no-win situation. Publishing scientific results, presenting them at a conference, or simply revealing them to a colleague not bound by a secrecy agreement is enough, in Europe, to prevent any subsequent protection by patent. To do so is to violate one of the cardinal rules on which any subsequent procedure to obtain IPR must be based - absolute originality. The innovation cannot have been divulged, in any form whatsoever, before making the patent application.

Six to 12 months' grace

Academic researchers have consequently launched a wide-ranging debate in which they are calling for a grace period, which would overcome this difficulty. This is a simple mechanism, already in force in countries such as the USA, Japan and Canada, under which it is possible to reveal the results of scientific research while retaining for six months or one year the option of applying for a patent to protect them. Researchers are obviously in favour of this. In Japan, however, nearly half of those who use this grace period are large companies, whereas in Europe industry representatives oppose the system. Should it be adopted systematically in Europe? This is the question that has recently been hotly debated.

In October 1998, the Commission invited about 150 experts to Brussels to hear their views. The following year, the Intergovernmental Conference of Members of the European Patent Organisation asked the European Patent Office (EPO) to 'consider under what conditions the effects of divulging information [prior to the patent application, through a publication, presentation or simple scientific communication] could be taken into account under European patent law.'

A classic dispute

Such occasions invariably produce the same old arguments. The main supporters of a grace period are public sector researchers and, to a lesser extent, certain SMEs. The former want to be able to publish or diseminate their results without delay; the latter stress that before applying for a patent they want to be able to carry out a better evaluation of the invention's technical or commercial potential, such as through prototype testing or by allowing third parties to test - actions which amount to divulging information.

Industry on the other hand opposes the grace period on the grounds that it creates legal uncertainty. It argues that if potentially patentable results are published it blocks any decision on their industrial use for several months, that is until it is known the extent of any claims linked to subsequent intellectual property rights which may be registered. In a report drawn up at the request of the EPO, Jan Galama, head of intellectual property with Philips International, stresses that the right to a grace period is a double-edged sword for the scientists themselves. In his view, in certain hot technological fields such as biotechnology, pharmacy and information technologies, the protection given theoretically by the right to a grace period is far from guaranteed. He believes the risk remains high of the author of a publication being robbed of the means to use the results subsequently by deft competitors using methods difficult to attack in a court of law. "The present economic and competitive environment does not allow us to grant ourselves the doubtful luxury of a generalised grace period", stresses Jan Galama.

Another expert consulted by the EPO, Professor Joseph Straus of the Max Planck Institute for Intellectual Property in Munich, nevertheless calls for just such an option. He believes that in the field of scientific research not even the immediate submission of a patent application "guarantees researchers absolute legal certainty", if only because of the lengthy period (18 months for the EPO) between filing for a patent and its publication. He points out that where a grace period used to exist, such as in Germany, Italy, the United Kingdom and Ireland, it was used as a simple 'safety net' against inadvertent divulgations and to permit testing. "No cases of abuse were revealed", he stresses. He also points out that such a system currently exists in 39 countries which all (except the United States) apply a 'first-to-file' system and calls for worldwide harmonisation of the grace period.

Necessary globalisation

Professor Straus's thinking is in line with general opinion, which considers that any grace period must be implemented at a global level if it is to work. This is a very topical issue with negotiations currently in progress at the World Intellectual Property Organisation (WIPO) in Geneva, with a view to adopting a new treaty in this field, known as the Substantive Patent Law Treaty.

The text under discussion includes an article mentioning the grace period, despite it having been rejected during previous negotiations in 1991. The Commission only has observer status in these negotiations by the Member States and has no official position on the subject. Nevertheless, the Research DG will be soon bringing together the parties to arrive at a minimal position. 'It would be preferable for all the Member States to speak with a single voice in defining the characteristics of this grace period if it were to be adopted,' explains the Professor Strauss.

The 'provisional solution'

There is another solution, which could resolve this dilemma for researchers: a provisional patent application. Under this system, an inventor who does not yet have all the necessary elements for a patent application ( or who cannot yet afford the expenditure ( can file a summary description of his invention with the patent office, thereby obtaining a period of one year to complete the application and pay the fees.

It is not difficult for researchers to produce such a project description on the completion of their research. They could thus publish their results without foregoing the possibility of their 'parent' organisation or university being able to take out a patent at a later date. This system was introduced in the United States in 1995 and most experts agree that some of the provisions of the European Convention on Patents and of the Patent Law Treaty of June 2000 have much in common with it.

It must, however, be stressed that this solution is mainly advocated by opponents of the grace period, primarily industry, while researchers view it as insufficient. Professor Straus stresses that "this system does not provide sufficient protection", in particular because researchers do not automatically envisage patenting at the time of publishing an article, and that the risks of such an application being divulged are "enormous". He adds that changes to the law needed to introduce it would be far greater than to introduce a grace period.


Boxes
image    
 

The not so secret life of patents

Even without a grace period in Europe, making a patent application is certainly no obstacle to the dissemination of knowledge. Paradoxically ( considering the notion of secrecy often wrongly associated with the concept of a patent ( a patent is itself a kind of publication. Patent applications are published 18 months after filing and are accessible through public databases. What is more, any patent application must describe the invention in sufficient detail to enable any member of the profession to reproduce it. In this respect, patents are a response to industrial secrecy and historically this was the main reason for creating them.

That leaves the question of deadlines. Should the publication of an article be delayed or an invitation to a conference refused so that a patent application can be submitted? Supporters of the use of intellectual property rights in the research field believe that such cases are much less frequent than is widely believed. A survey among more than 200 researchers and institutions in the field of biotechnologies ( a sector in which scientists are increasingly experienced in filing for patents ( showed that just 20% of public researchers and 10% of private sector researchers believe that the need to patent significantly delays publication.

Blank image
    Top of the page
image    
 

To patent or not to patent?

There is also a type of uncoded knowledge, which it is impossible to patent or publish but which is crucially important nevertheless: technical know-how. The only way to circulate it is through the people who possess it. The simplest way is for the researcher to join an industrial team, whether temporarily or permanently.

In fields such as the biotechnologies, information technologies and advanced materials, the transfer of knowledge to the private sector over the past few years has also resulted from scientists setting up their own innovative small businesses. These spin-offs are frequently located on campus (where, at least initially, they benefit from access to the technical facilities of their university or organisation) and provide very advanced services or products to major industrial firms which are unable to develop them themselves. Biotehnology SMEs, for example, sell access to genetic databases equipped with computer-based tools or biological systems for the screening of therapeutic molecules.

Their formal and informal knowledge ( patents, exclusive licences and individual know-how ( constitutes their sole capital. It is that which they offer as a guarantee to investors with venture capital. A knowledge economy has thus developed in which intellectual property and technical knowledge are a veritable currency.

Blank image
    Top of the page
image    
 

When property is intellectual

A specialised United Nations institution based in Geneva with 179 member states, the World Intellectual Property Organisation (WIPO) aims to 'promote the use and protection of works of the human spirit'. It administers 23 international treaties on intellectual property (from copyright to industrial models, including trademarks and patents). Its field of interest therefore covers the world of ideas and creativity in the widest sense, whether works of art or scientific inventions. This is reflected in the subjects of the exhibitions it holds at its Geneva headquarters, such as 'Women who invent', 'Music in the digital age', 'Invention in the home' and 'Comic strips, cartoons and creativity'.

http://www.wipo.org/index.html.en

Blank image
imageTop of the page
Boxes
image

 

Graphical element

 


European Research News Centre - Homepage
Graphic
Weekly Headlines RTD info magazine Diary Press releases Contacts
Graphic