by Gabriel Di Blasi*

A grace period can be described as a temporary safeguard of the novelty of an invention, a model of utility or an industrial design which allows the inventor, even before filing his patent application, to disclose the main characteristics of the product, its process or means of creation, as well as its usage without jeopardising its novelty¹. In other words, it is a way of preventing the object of an invention from being considered a prior art.

This temporary protection was created in the 19th century, in order to make the production, marketing and exploitation of inventions easier, whilst enabling the inventor to maintain their competitive advantage.

The grace period has been introduced under several legislative perspectives, comprising three basic categories. The national rules provide different degrees of effectiveness:

1. The non-prejudicial disclosure of the invention at an exhibition by the inventor himself or third parties with former ’s due consent;
2. The unlawful non-prejudicial disclosure of the invention, or the disclosure in consequence of an abuse, by third parties, that is, without inventor’s consent²;
3. The disclosure of the invention by the inventor or authorized third parties in other circumstances, such as a published information about the object of the invention by means of articles or discussions or the public use of the invention for testing purposes.

Many countries established their respective legislation based on categories 1 and 2. With regard to category³ there are a considerable number of obstructions, which are outside the scope of this article.

Comparative Law

Concerns relating to inventions disclosed to the public for tests and marketing go back to 1855, when France took the first step in legislating the issue. The issue of temporary protection was discussed at international conferences, leading to Article 11 of the Paris Convention, which states that member countries shall grant a temporary protection, which may not extend the terms of Article 4, “to patentable inventions, models of utility, industrial designs or models, as well as to trademarks for products appearing in international exhibitions, either official or officially accredited, organized in their territory.

In recent years many meetings have been held to discuss harmonization of national legislation. Simplification and convergence of patent systems is essential for a development of the global economy in view of increasing globalization.

According to said statement, the regulation of the issue has been mostly rejected by the Paris Convention in relation to the internal right of each country member of the convention.

USA

US law grants the inventor a 12-month term, from the date of publication of the data referring to the object of the invention, to file the patent application “anywhere in the world”, or from the beginning of the sale or the use of the patentable object “inside the US”.

However, in order to interpret this provision, the first-to-invent system adopted in that country shall be taken in account.

According to Adelman, Martin J. (et al):

“This provision therefore straightforwardly sets forth the “first to invent” system unique to the United States. When multiple persons claim the right to a patent on a given technology, this system allows inventors who were not the first to reach the Patent Office to establish their right to the patent by demonstrating inventive acts prior to those of their competitors”.

Two main issues about the concepts present in Title 35 of the U.S.C should be noted:

• The first-to-invent system adopted by the US Patent Act results from the fact that the first real inventor is the only person able legitimately to claim the patentable invention. It is also the date on which the invention became relevant for the evaluation of the legal requisites of novelty and lack of obviousness.
• Under US law, sometimes the filing date becomes important for ruling the right to obtain a patent. The same occurs when the invention is disclosed, but it avoids the patent being claimed. Such disclosure will be deemed as prior art against inventions of the same conception conceived after the date of the publication.According to Stedman:
  “(…) many of the same pragmatic considerations that support a first-to-invent approach (opportunity to test, to improve, to prepare the application carefully, etc.) equally support the grace period. The one seeks to avoid the adverse effect of anticipatory application; the other the effect of anticipatory publication or public use⁴”.

And Adelman, Martin J. (et al.) concludes :

“The statutory bars of paragraph 102 (b) are tied to the filing of a patent application. The point in time one year prior to the filing date is termed the “critical date”, and
statutorily specified activities such as publications or sales act to bar, or prevent, the applicant from obtaining a patent if they occur before the critical date. Section 102 (b) thus produces a one-year “grace period” which allows an inventor to determine whether patent protection is desirable, and, if so, to prepare an application. If, for example, the inventor publishes an article in a scientific journal on a given date, he knows that he has one year in which to file an application. Note that the inventor has a broader range of concerns than merely his own behavior, because uses, sales, and other technical disclosures by third parties will also start the one-year clock running. Foreign systems also employ the filing date as the basis for statutory bars, but often do not include a grace period or offer one only under more limited circumstances. Thus, in the US, an inventor can sell a commercial embodiment of his invention, yet still obtain patent protection if an application is filed within one year. In Europe and Japan, such a sale prior to filing is ordinarily novelty-defeating. Perhaps the most enlightened grace period in a first-to-file patent system is found in Canada where inventions disclosed to the public by an applicant or by a person who obtained knowledge of the invention, directly or indirectly, from the applicant, is not patent defeating if done within an year of the filing date⁵.”

Europe

With regard to Europe, only the conditions set forth at the Convention on the Grant of European Patents will be discussed. Article 54 of the Convention provides that “an invention shall be considered to be new if it does not form part of the state of the art.” The state of art is defined as: “everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application”.

The grace period granted by Article 55 of the Convention is valid for only six months.

Summary

The use of these dispositions tend to be controversial, for they are subject to the judgment of the most diverse competent government authorities (technicians, judges, etc.)
The applicant should be notified that this instrument is not provided for uniformly, nor does it even exist in many countries, allowing the invention to be protected in the same countries, if it was previously benefited from the referred instrument.

Therefore, in order to apply for a patent in other countries, before filing an application, the disclosure should be avoided and counseled at any cost.

Brazilian laws

Since 1882, Brazil has provided inventors with a way to disclose their inventions publicly, without impairing its novelty. The Brazilian pioneering in this field is worthy of note.

Law of the Industrial Property (LPI) – Law no. 9.279/96

Already under the denomination of “grace period”, current Brazilian legislation provides, pursuant to Chapter II (Patentability), Section I (patentable inventions and models of utility), Article 12, that:
“The disclosure of an invention or model of utility in events such as scientific congresses etc, occurring during the 12 month period prior to the filing date or the priority of the patent application, shall not be considered as prior art, provided that such disclosure can be provided, according to the conditions set forth in the referred article.

Also, the indication of the disclosure is optional during the filing of the patent application already disclosed (type, place and date of occurrence). If the inventor does not indicate the disclosure, he will be required to submit a written confirmation at the moment the application is checked.

The inventor should disclose the invention, so that he can benefit from the grace period. The Brazilian PTO should also disclose, through an official publication, the patent application filed without the inventor’s consent, based on information obtained or resulting from the measures taken by him, or by third parties. It should be pointed out that when it comes to an invention that has been commercialized within the period of 12 months prior to the filing date, the same can benefit from the grace period, for the law only defines, the person who can practice the disclosure, not what is deemed as disclosure. When an invention is commercialized, it becomes disclosed.

Polemic issues

There are two issues worthy of further discussion.

I. The term “public”

The LPI cannot delimitate the extension of the concept “disclosure of the invention”. Thus, some doctrinaires are based on paragraph I, article 11, comparing the concepts of “disclosure of the invention” to “accessibility to the public”, as stated in paragraph I:

“Prior art consists of everything that is made accessible to the public prior to the filing date of the patent application, by written or oral description, usage, or any other way, in Brazil or overseas, excepted the disposition in articles 12, 16 and 17”.

Due to the phrase expression “accessible to the public”, preliminary conclusions suggest that the interpreter can accept a broad definition. However, could someone benefit from articles 12, 11, paragraph I, of the LPI, to safeguard the novelty of an invention in case of its “public” disclosure, where it is discussed at a closed business meeting, after which one of the participants abusively makes accessible the concept, without the inventor ́s consent?

Such questions prompt thought about the real meaning of the concept “public”, which is used in almost every patent system.
The issue was so discussed by Luiz Guilherme de A. V. Loureiro:
“Thus, for normative purposes, the term “public” can be considered as a multitude of people, a small group or even one single person, provided that this person is able to understand and communicate the content of the invention without being notified to maintain its secrecy”.

The information is deemed as available to the “public”, even if one single member of society is allowed to have access to the invention and is able to understand its technology without being notified to maintain its secrecy⁶.

This is the opinion of the referred Board of Appeal of the European Patent Office:

“(…) a single sale is sufficient to render the article sold available to the public within the meaning of Art. 54(2) provided the buyer is not bound by an obligation to maintain secrecy. It is not necessary to prove that others also had knowledge of the relevant article. In the opinion of the board this is also the case when the article was sold to a man not skilled in the art⁷”.

This appears to be the most appropriate delimitation of the issue, as it corresponds to the dictionary definition of the word in the Portuguese language:
“Masculine noun, 7. People in general. 8. Group of people who reads, sees or listens to a literary, drama or musical play etc. 9. Group of people who are part of an audience, meeting or demonstration; an audience. 10. Extended word. Group of people who pays attention to what someone does, says etc. 11. Group of people to whom an artistic, journalistic or advertising message is addressed to⁸”.

Although the law omits a definition of public, it should not be criticized, since, according to Tércio Sampaio Ferraz Júnior:
“The first step to interpretation is verifying the meaning of the words in a text, its correspondence to the reality conceived by it (…). Thus, the first task of the interpreter is to establish a delineation concerning the words in a text and its correspondence as aforesaid. The juridical definition oscillates between the onomasiological aspect of the word, that is, the current use of the same for the designation of the fact, and its semasiological aspect, which is its normative signification”.

By defining “public”, the law compares the onomasiological and semantic aspects of the word.

The words of the legislator have exclusively the denotative, dictionary meaning, without raising philosophical questions concerning this term. The referred word did not show another normative signification (semantic).
When referring to “disclosure of the invention”, article 12 of the LPI goes back, according to the doctrine, to the concept of “public” in the sentence “made accessible to the public” of paragraph I, article 11, of this law, which gives the idea of a “group of people”, to be interpreted herein pursuant its dictionary meaning.

If even the mathematical science accepts the existence of a unitary numeric group, why should it not be accepted that the “public” disclosure of an invention to a single person can prejudice its patentability?

2. The regulation of article 12 of the LPI

The inventor, upon the filing of a patent application, is free to choose the indication as to the type, place and date of the preceding public disclosure of the privileged object up to one year before the submission of the administrative application through a written statement. If the inventor does not indicate the disclosure, he might be required to submit a written confirmation at the moment the application is checked, being subject to loss of novelty.

Further, the BPTO may request from the inventor a declaration relating to the disclosure, with or without proof documents.

Despite the legal provision in this sense, the BPTO has not made any official statements and has failed to rule the matter suitably.

The following terms of the provision should be noted:

“The BPTO may require from the inventor a declaration regarding the disclosure, with or without accompanying documents of proof, under the conditions set forth in the regulation”.

At first glance of the analysis, it does seem that such legislative integration is optional.
However, such condition could almost be considered mandatory, i.e., a hierarchic rule of third degree would be desirable, especially with the purpose of granting juridical guarantee to the patent system; such guarantee, is one of the pillars of law, together with justice and the social pacification.

If it is unknown when and under what conditions a patent application should be filed accompanied by the evidence related to the preceding disclosure of the invention, there is a risk of a lack of juridical guarantee for the system ́s users. Thus broader state regulation may be required.

* Published in Patent World – August 2002

1 Domingues, Douglas Gabriel. Direito Industrial: Patentes, RJ, Forense, 1980, p. 214.
5 This category shall be forcibly ruled by a national legislation, according to the Paris Convention., as mentioned hereafter
2 Cases and Materials o Patent Law, Minnesota, West Group,1998, p. 204.
3. The First-to-Invent Concept in the United States Patent Law, 1971, 2IIC 241 ss., p.242
4.Op. cit., pp. 204-205.
5. A Lei de Propriedade Industrial Comentada, SP, Lejus, 1999, p. 53.
6. T482/89 (OJ 1992,646) (likewise T953/90, T969/90 and T462/91).
7. Dicionário Aurélio Eletrônico, v. 2.0, noun: public
8. A Ciência do Direito, SP, Atlas, 1988, pp.74-75.