Pursuing its work on Substantive Patent Law Harmonisation (SPLH), in June 2024 FICPI organised a colloquium on SPLH presented jointly with AIPPI and AIPLA.
Hosted by the EPO in Munich, the colloquium gathered around 60 high-level experts from several IP offices and IP organisations from major jurisdictions around the world.
The original format of the colloquium fostered creative and open discussions amongst participants, resulting in new ideas which could contribute to further progress in the harmonisation process.
Regarding the grace period, schemes using the filing date, or alternatively the priority date, were discussed. In addition, a new possible scheme was offered for consideration that would allow two periods for disclosures to be graced. Under this new possible scheme an applicant could claim the benefit of a grace during 12 months from the actual filing date of a patent application, and also 6 months from the priority date of the same application. Other important aspects of the grace period such as a possible statement, and possible provisions governing the publication of a patent application claiming a grace period, have been extensively discussed.
The colloquium also allowed constructive discussions on the rights to be conferred to a party who made some exploitation of an invention while another party has filed a patent application covering that same invention. Conditions for obtaining such rights, as well as possible change of scope, volume or territories of the exploitation were considered.
Provisions governing situations where patent applications filed closely in time conflict were also considered. Existing regimes as implemented in the United States, Japan, UK and the European Union were discussed and participants could express their preferences and consider a possible common ground.
A summary of discussions during the colloquium can be found here.
FICPI was represented by R. Danny Huntington, Michael Caine, Roberto Pistolesi, Robert Watson and Jerome Collin. Other FICPI members also represented national sections of FICPI and contributed significantly in this important and constructive event.