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26 January 1999
PE 226.187/fin. A4-0037/99
on the introduction of a grace period for innovations in national patent laws
Committee on Legal Affairs and Citizens' Rights
Rapporteur: Mr Willi Rothley
By letter of 12 March 1998 the Committee on Legal Affairs and Citizens' Rights requested authorisation to draw up a report on the introduction of a grace period for innovations in national patents laws.

 By letter of 12 March 1998 the Committee on Legal Affairs and Citizens' Rights requested authorisation to draw up a report on the introduction of a grace period for innovations in national patents laws.

At the sitting of 19 June 1998 the President of Parliament announced that authorisation had been granted to draw up this report pursuant to Rule 50 of the Rules of Procedure.

The Committee on Legal Affairs and Citizens' Rights had appointed Mr Rothley rapporteur at its meeting of 17 March 1998.

It considered the draft report at its meetings of 3 June, 25 June and 23 September 1998 and 21 January 1999.

At the last meeting it adopted the motion for a resolution by 13 votes to 0, with 2 abstentions.

The following were present for the vote: De Clercq, chairman; Palacio Vallelersundi, first vice-chairman; Rothley, second vice-chairman and rapporteur; Barzanti, Bennasar Tous (for Ferri pursuant to Rule 138(2)), Cassidy, Crowley (for Janssen van Raay), Falconer (for Cot), Fernández-Albor (for Mosiek-Urbahn pursuant to Rule 138(2)), Gebhardt, Lehne, Newman, Oddy, Peter (for David Martin pursuant to Rule 138(2)), Sierra González, Ullmann, Verde i Aldea and Zimmermann (for Berger).

The explanatory statement will be presented orally in plenary sitting.

The report was tabled on 26 January 1999.

The deadline for tabling amendments will be indicated in the draft agenda for the relevant part-session.


Resolution on the introduction of a grace period for innovations in national patent laws

The European Parliament,

- having regard to Article 138b, second paragraph, of the EC Treaty,

- having regard to Rule 50 of its Rules of Procedure,

- having regard to the report of the Committee on Legal Affairs and Citizens' Rights (A4-0037/99),

- having established that a proposal comparable to this initiative is neither under preparation nor included in the annual legislative programme (Rule 50(2) of its Rules of Procedure),


A. Background

1. in all Member States of the European Union, the rule applies that an invention can no longer be patented where it has been made public before the filing date with the appropriate patent office,

2. by contrast, the American patent law grants an inventor a grace period of one year within which he can file his invention for a patent without suffering adversely from prior publication,

3. Japan has followed the American example, and whereas the grace period for Japanese patent applications is at present limited to six months, although discussions are taking place on bringing it into line with the American system in future,

4. the absence of such a grace period in Europe is very hard on particularly innovative sectors such as researchers and small and medium-sized businesses,

5. a researcher can survive only if he publishes a great deal and through his publications occupies a prominent place in the citation index, i.e. if his work is frequently quoted by colleagues, whereas new research findings, i.e. the first publications on an interesting subject, are naturally the ones that are noticed and hence quoted, and whereas an ambitious and creative researcher will not therefore spent time on filing for a patent and on completing the relevant formalities at the patent office but will concentrate on rapid publication of his findings,

6. the loss of an exclusive marketing right may jeopardise the existence of small and medium-sized undertakings, whereas such firms are often unaware of the stringent requirements of patent law which need to be satisfied in order to safeguard the innovation defined in terms of patent law and hence the right to a patent, whereas an injudicious letter to a customer or the presentation of an invention on the premises or an outdoor trial (e.g. of a harvester) may be enough to spell the end of the patent and perhaps of the whole firm, and whereas large companies with professionally staffed patent departments do not have these problems,

7. in the USA, this problem was recognised and a pragmatic solution ('grace period') found long ago in the American patent law (35USC, 102b),

8. American researchers have now succeeded not only in establishing a leading position in the citation index on almost all major subjects but also in earning substantial funds for further research from marketing, whereas the protection which US patent law affords them is without doubt one of the factors that have helped the many highly innovative small firms that are the showpiece of the American economy (Silicon Valley) to thrive, and whereas Europe is a long way from matching the high figures for patents filed with the American patent office by the university sector and by small and medium-sized companies,

9. biotechnology is an especially appropriate field in which to study the link between economic success and inventor-friendly patent legislation which provides for a grace period, since it is in that field that many small and medium-sized firms are engaged in research jointly with universities, and the loss of a patent as a result of an indiscretion by a member of a research team may jeopardise an entire project,

B. Legal framework

10. the proposal to introduce a grace period for innovations in Europe forms part of the current efforts of WIPO, the World Intellectual Property Organisation, to secure worldwide harmonisation of patent law on the basis of a harmonisation treaty (Patent Law Treaty, PLT),

11. the proposed text is identical to the version drawn up by WIPO in Geneva in collaboration with experts over a period of more than ten years and presented to the delegates of the Member States at the diplomatic conferences in The Hague on 3 - 28 June 1991 and 12 - 30 July 1993 (WIPO Document PLT/DC/3, page 22 ff and PLT/DC/69, page 60 ff),

12. all Member States of the European Union were represented at these conferences, and whereas, although a majority of the conference participants were in favour of the provision concerning a grace period for innovations, the harmonisation treaty ultimately failed to be adopted on political grounds,

13. the cause of this failure lay in the politically unfortunate linkage of the largely uncontroversial grace period for innovations with more critical contentious issues of patent law, in particular the question as to who had the right to the patent, the 'first to invent' as in the USA or the 'first to file' as in Europe,

C. Situation in Europe

14. Article 55(1a) of the European Patent Convention, EPC, provides for a grace period for innovation where exceptional circumstances apply: if an invention is published with abusive intent by a third party to the detriment of the inventor, the inventor is granted a grace period of six months for the innovation in question, whereas the circumstances provided for in Article 55(1a) of the EPC occur so seldom, however, that this provision has never yet been applied, and whereas, more particularly, publication by a careless inventor himself is not regulated,

15. the European Patent Organisation has for a long time been considering reintroducing the grace period for innovations by amending the patent convention, whereas, most recently, the Standing Advisory Committee before the European Patent Office has advocated replacing the inoperative Article 55 of the EPC by the WIPO proposal concerning Article 12 of the PLT (SACEPO 6/95 rev. 1), whereas, however, an amendment to the European Patent Convention can, according to Article 172 of that convention, be decided only at a diplomatic conference of the countries that are a party to the convention,

D. Competence of the European Community

16. in the Green Paper entitled 'Promoting innovation through patents' (COM(97)0314), the Commission established that the European Community is competent for matters relating to patents,

17. recital 35 of the version of the biotechnology directive approved by Parliament (COM(95)0661) reads:

'Whereas the Commission will investigate whether, in the field of basic genetic engineering research, free and unimpeded scientific exchanges are hampered because publications containing information eligible for patent protection are delayed or not undertaken, because otherwise patenting would be precluded on the grounds of lack of novelty of the invention; whereas the Commission will carry out a comparison with the patent law of the USA and Japan in this respect and report to the Council and the European Parliament two years after the entry into force of this directive.',

18. the present initiative acts on the above recital and seeks the introduction of a grace period for innovations in the patent laws of the Member States of the European Union,

E. Legal basis

19. a Community legal act can be based on Article 100a of the EC Treaty,

I. Calls on the Commission to propose the following European Parliament and Council directive:

(1) [Circumstances of Disclosure Not Affecting Patentability]

Disclosure of information which otherwise would affect the patentability of an invention claimed in the application shall not affect the patentability of that invention where the information was disclosed, during the 12 months preceding the filing date or, where priority is claimed, the priority date of the application,

(i) by the inventor,

(ii) by an Office and the information was contained

(a) in another application filed by the inventor and should not have been disclosed by the Office, or

(b) in an application filed without the knowledge or consent of the inventor by a third party which obtained the information direct or indirectly from the inventor,


(iii) by a third party which obtained the information direct or indirectly from the inventor.

(2) ['Inventor'] For the purposes of paragraph (1), 'inventor' also means any person who, at the filing date of the application, had the right to the patent.

(3) [No Time Limit for Invoking Grace Period] The effects of paragraph (1) may be invoked at any time.

(4) [Evidence] Where the applicability of paragraph (1) is contested, the party invoking the effects of that paragraph shall have the burden of proving, or of making the conclusion likely, that the conditions of that paragraph are fulfilled;

II. Instructs its President to forward this resolution to the Council and the Commission.

Last updated: 27 March 1999Legal notice