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TPP on Patents: New may not be absolutely novel

TPP on Patents: New may not be absolutely novel

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The TPP (Trans-Pacific Partnership) was apparently ratified on October 5, 2015 by the United States, Japan, Australia, Canada, Malaysia, Mexico, Peru, Vietnam, Brunei, Chile, New Zealand, and Singapore. While the treaty covers many aspects of trade, one provision in particular will be of interest to readers of this blog. The full text has not been officially released yet by a leaked version has been provided by Wikileaks.Article QQ.E.2: {grace period}

Each Party shall disregard at least information contained in public disclosures used to determine if an invention is novel or has an inventive step if the public disclosure:

  • was made by the patent applicant or by a person who obtained the information directly or indirectly from the patent applicant; and
  • occurred within 12 months prior to the date of filing of the application in the territory of the Party.

This is similar to 35 U.S.C. §102(b) prior to the AIA. Japan previously had a six month grace period and Australia and Canada already had a one year grace period. The exact status of the grace period in the US under tha AIA has been somewhat unclear.

Prior to the AIA, an inventor could disclose an invention (e.g. at a conference or in a scientific publication) and file a provisional patent application one year later. This effectively provided two years to file a “bona fide” application on the disclosed invention.

Following the revision of §102, Chief Judge Randall Rader of the CAFC (now retired) was heard to say that the grace period under the AIA required filing of a non-provisional application (US or PCT designating US) within the first year. While the rationale behind this statement was not clear to me, Judge Rader’s opinion carries infinitely more weight than mine, although he retired from the bench before the CAFC dealt with any cases on the subject.

It is not yet clear how section 102 (AIA) will be interpreted under TPP.

Assuming that the leaked copy of the treaty is correct, we now have a bloc of countriesa including all of North America as well as Australia/New Zealand and Japan that provide a one year grace period for inventors.

It will be interesting to see how this influences the pending Transatlantic Trade and Investment Partnership (TTIP) between the European Union and the US. A grace period is being discussed in those negotiations although it is difficult to guess how likely it is to find its way into the final agreement.

Having secured a 12 month grace period in TPP, the US is in a position to push for a similar provision in TTIP under the banner of “International Harmonization”.

Some readers may recall that it was “International Harmonization” which led to inclusion of first [inventor] to file provisions in the AIA. It will be interesting to see if the EU is prepared to pay the piper in TTIP.

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