Intellectual Property Today: The Need for Reform, Not Harsher Penalties

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Table of Contents

The Patent Reform Bills
The United States Patent Law
Corporate Liability for Patent Infringement
Problems with Criminalization of Patent Infringement
Inequitable Conduct Doctrine Reform
Grace Period
Works Cited

The Patent Reform Bills

During the last several years, the Congress dedicated considerable amounts of time and effort to adjust the United States patent law. During the 110th Congress (2007-2008), a bill known as the “Patent Reform Act of 2007” was passed by the House of Representatives but it did not pass past the Senate. In September 2008, the Honorable Jon Kyle introduced a new bill in the Senate, the “Patent Reform Act of 2008” (Gulbrandsen, Adamany, Haberny, and Sheasby 2). The authors of the stalled Senate bills and the supporters of patent reform promised that reform legislation would be re-introduced and passed in 2009. In the interim, between the close of the 110th Congress and 2009, the transfer of power to a new Congress with enhanced Democratic majorities as well as the momentous appointment of a new President, the world experienced a meltdown of its financial markets of a magnitude that has not been experienced since the Great Depression. On March 3, 2009, both the House and the Senate introduced prominently similar patent reform bills, both of which were entitled the “Patent Reform Act of 2009” (Gulbrandsen, Adamany, Haberny, and Sheasby 2). While the Patent Reform Act of 2009 is almost similar to the previous two stalled bills, some changes were proposed in the Patent Reform Act of 2009. The proposed changes are designed to improve patent quality, curb excessive litigation, and promote internal harmonization between United States and foreign patent laws. These changes include:

Inequitable Conduct

Unlike the previous two stalled bills, the 2009 patent reform bills fail to address the doctrine of inequitable conduct. Earlier patent reform bills restricted when inequitable conduct could be claimed (after the infringement of a valid claim is found) and tried to limit the constituents of inequitable conduct (Becker 3).

Best mode

The best mode condition remains in the 2009 legislation. Provisions to get rid of the best mode condition were present in prior legislation (Becker 3).

Prior art search

Previous editions of patent reform bills mandated applicants to carry out prior art searches. The intention of this condition was to enhance the quality of a patent. Nevertheless, the higher costs on the patent system, and particularly individual creators, of requiring patent searches led to the elimination of this condition in the 2009 patent reform bills (Becker 3).

Patent publication

Unlike previous patent reform bills, the 2009 edition does not require that all applications of patent be published at 18 months (Becker 3).

Little attention has been given to the undesirable impact the proposed reforms have on innovation at a time when innovation is important to economic recovery (Reichman 2). The present effort to reform patent law has its roots in a number of scholarly articles and studies. More recently, the major driving force for reform is a coalition of large information technology and financial service companies that act jointly through the Coalition for Patent Fairness (CPF). The chief grievance of this coalition is that alleged doubtful assertions of patent infringement are being made which lead to increasing litigation costs for coalition members. The coalition argues that this condition is as a result of an increasing number of patents of low quality (Sichelman 5). Increasingly, such litigation is being initiated by patent aggregators cynically referred to as “patent trolls” (Gulbrandsen, Adamany, Haberny, and Sheasby 2). On the other end of the patent reform debate is the Coalition for 21st Century Patent Reform and the Innovation Alliance. The former consists of a varied group of industries but populated in considerable proportion by representatives from the patent law associations as well as pharmaceutical and medical device industries. The Innovation Alliance on the other hand is a varied group composed of a large mobile phone manufacturer and technology-based companies. Both groups assert that the reforms supported by the Coalition for Patent Fairness would deteriorate patents and thereby hurt innovation in the United States.

The United States patent system has some provisions that are not widely customary or subscribed to by other countries around the globe. For instance, the “first-to-invent” provision permits the first person to make an invention to claim her right to the patent over the first person to file a patent application (Gulbrandsen, Adamany, Haberny, and Sheasby 2). Even though this may appear to be an insignificant element, the Lockean approach would specify that the person who first effectively put her labor into the creation of an invention is more worthy of the monopolistic safety of a patent than the first person who submits an application to the United States Patent and Trademark Office (PTO). Another exceptional provision of the US patent system is that the adjudication and enforcement of patent rights in the United States is the jurisdiction of the federal courts, which are broadly perceived as more skilled than the state courts. Consequently, the inventor who seeks to defend her rights to her creation in the United States has the support and the regularity of the highest courts in the land. These exclusive provisions, in addition to the tough property rights and individual rights history of the United States, merge to provide the US patent system with a strong grip in the American law. The patent system has gone through various changes and has evolved to its current height of efficiency. At its onset, however, it was fundamentally a legal transfer from England which the Framers of the Constitution chose to become accustomed to and carry on (Gulbrandsen, Adamany, Haberny, and Sheasby 2).

The United States Patent Law

The Basics

In the United States, inventors are granted the right to creation by the government so as to “Promote the Progress of Science and useful Arts” (Mendez 2). A patent is therefore granted to “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” (Mendez 2). Such a protection may be extended even to micro-organisms that are manufactured by man and that do not take place naturally. The term invention also encompasses things or ideas that have been discovered by man. Nevertheless, an invention ought to be functional, original, and non-obvious to a person who has skills in the art regarding the invention in question. This theoretical person is similar to the average person in the tort law. A number of factors that help in determining if a person has this average skill include: the educational level of the creator, the challenges the inventor encountered during the invention of the art, existing art solutions to the challenge, the speed with which things are innovated, the complexity of the technology inherent in the art, and the educational levels of other persons in the field (Kalan 4).

To determine if an invention is non-obvious, courts usually examine the extent of the existing art, disparities between the existing art and the invented art in question, the level of expertise of those who utilize the relevant art, and secondary concerns such as the viable achievement of the existing art, if the claimed subject matter provides solutions to long-term, yet unsettled needs, as well as the failures of other inventors (Abramson 5). Even though through favor, federal courts initially examined prior lessons, opinions, or the incentive to merge prior art as a test for non-obviousness, this strategy was found to be too constricted in its scope. In addition, the precedence rule in the United States asserts that patent protection is granted to the first person who conceives an idea and practices it with rational meticulousness (Carroll 12). A person who attempts to establish that he has precedence over other inventors, therefore, must demonstrate that he turned the invention into practice. On the other hand, a person in defense of an infringement allegation must show that the plaintiff either: did not reduce the invention to practice, that he reduced the idea as the subordinate user to practice before the superior user; or he encouraged the superior inventor to reduce it to practice after the superior inventor was unable to do so after a long, inexplicable and unnecessary delay in the creative process (Mendez 3).

Patent Prosecution

Once an invention has been judged to be creditable for protection, the inventor must divulge and make a claim to the subject matter that the patent is to protect. The application process is known as patent prosecution, and it is best expressed as an interactive procedure between the U.S. Patent and Trademark Office (PTO) and the inventor. The inventor puts forth a number of claims, and the PTO either accepts or rejects them, providing the inventor with many opportunities to modify them as required. The process is designed to be meticulous, because the inventor is to benefit greatly from the “quid pro quo of patent protection” (Mendez 3). This interaction guarantees that the inventor is given special rights to his creation. A patent is said to be “the grant of a statutory monopoly… meant to encourage invention by rewarding the inventor with the right, limited to a term of years fixed by the patent, to exclude others from the use of his invention” (Mendez 3). As a result, there is an assumption that an inventor is granted a patent if the public stands to receive a valuable thing in exchange.

Many scholars assert that the idea of the “quid pro quo” in intellectual property law is out of date and that the metaphor has been infringed by the Eldred case. However, it is a fact that this exchange serves the public interest because it encourages inventors to create new things and the invention is published with the PTO for profitable exploitation when the patent expires. Patent prosecution is guided by four prerequisites. First, the inventor must describe the invention in writing because: it places the public in ownership of the patented subject matter, so that the PTO and the courts can establish if the invention is already known to the public or has already been put to common use; the written condition provides a warning to otherwise innocent inventors of potential encroachment; and it enables future inventors to create and utilize the invention. The written description requirement is met if it logically communicates the claimed subject matter to other creators who have skills in the art at the time the subject matter is communicated. A drawing can also meet the written description prerequisite (Daniel 5).

The second condition is that the patent application must make it possible for any person with skills in the art to create and utilize an invention. A claim should not be too extensive such that it does not allow others skilled in the art to use, reproduce, or create the invention. If a consequent inventor engages in unwarranted testing so as to duplicate a patent, the patent is judged as deficient. The third condition is that the claim must be plain and brief. A claim should be specific so that anyone with skills in the art can effortlessly obtain the aspects of the claimed subject matter. Lastly, the inventor should describe the best mode considered by the inventor of conducting the invention. This requires the inventor to disclose the best method or process he used in creating the invention he seeks to patent. Unlike the enablement condition, the best mode condition examines the prejudiced knowledge of the inventor so as to determine what he or she believed was the best method or process for creating the invention. The United States is the only country that mandates the best mode of an invention to be revealed (Mendez 3).

Patent Infringement

The Patent Act provides that “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent” (Mendez 4). Furthermore, anyone who actively encourages infringement of a patent is liable as an infringer. Infringement in general necessitates that a patent claim covers the supposed infringer’s product or process, but such an establishment necessitates that the words utilized in the claim are explicitly defined. Thus, a hearing is needed before the court can construe the patent. In addition, the creation of a patent is an issue of law that is determined by the judge, not a jury. Infringement can also be carried out directly or indirectly. Direct infringement necessitates the patented invention and the supposed infringing patent to be the same. Courts in general concur that direct infringement is very uncommon. On the other hand, indirect infringement is much more multifaceted. Indirect infringement asserts that a patentee may sue a supposed infringer if the infringing tool performs considerably the same purpose, in considerably the same manner, with considerably the same outcome (Daniel 6).

In order to establish this, the court examines: the patent itself, the prior art, the specific circumstances of the case, the purpose of the element within the context of the patent, the element’s qualities when merged with the other claimed elements in the patent, the intended function of the element, and whether a person with skills in the art may have the knowledge that the element in the patent can be changed with an unclaimed one. The chief justification for the principle is to put off inventors from making irrelevant variations to a patent so as to avoid liability for infringement. However, there is a defense against the invocation of indirect infringement. If the patentee was compelled to give up an aspect so as to pass PTO examination, he is “estopped” from appealing to indirect infringement in successive litigation. This is referred to as “prosecution history estoppel” (Mendez 4). Unless the patentee can prove that at the time of the surrender, an ordinary person with skills in the art could not be expected to sketch a claim that would include the so-called equivalent element; he cannot invoke the doctrine to later claim it as part of his creation. In other words, the patentee has to make an argument that when he planned the patent application, he was not able to anticipate that the surrendered element was equivalent to the element claimed.

Corporate Liability for Patent Infringement

Under United States Law, the liability of officers and directors for corporate patent infringement originates from the statutory provisions pertaining to direct infringement and encouraging infringement as provided in the Patent Act. The provision asserts that anyone who creates, utilizes or sells any patented creation within the United States without authority during the term of the patent infringes the patent. In addition anyone who enthusiastically encourages the infringement of a patent is liable as an infringer (DeVito and Romajas 2).

35 U.S.C. § 271

Theoretically, this statute ought to be applied uniformly in all national jurisdictions, because the Court of Appeals for the Federal Circuit is the only court that has appellate jurisdiction over cases that relate to the U.S. patent laws. This court was formed in 1982 partly to enhance consistency and dependability in the construal of the patent laws. Nevertheless, practically, the objectives of doctrinal firmness and consistency have not been perfectly achieved, partly because the rulings of the Federal Circuit on officer and director liability have not communicated clear and consistent standards to be applied under the applicable statutory provisions (Darrow 9). However, according to the appellate and district court rulings, at least the following general principles seem relevant to determinations concerning the personal liability of officers and directors for corporate patent infringement: The actions taken by officers or directors may form the foundation for both direct infringement under § 271(a) and encompassing infringement under § 271(b).

An officer or director of a corporate patent infringer does not have liability for direct infringement under § 271(a) unless the corporate veil is pierced or the officer or director directly took part in the actual infringement. Piercing the corporate veil is not essential in proving that an officer or director is liable for encouraging infringement under § 271(b). An officer or director of a corporate infringer does not have liability for encouraging infringement under § 271(b) unless he had the knowledge or needed to know that the actions taken by the company at his direction would lead to infringement. If an officer or director can illustrate that he rationally acted on the guidance of counsel that no infringement would arise from the corporation’s actions, then the officer or director can be able to nullify the intent aspect of § 271(b) (DeVito and Romajas 3).

Problems with Criminalization of Patent Infringement

A number of policy rationales for not criminalizing patent infringement were outlined by the WIPO’s Advisory Committee on Enforcement. These rationales include:

Criminal courts are not qualified to deal with patent issues

The Committee argued that in some common-law countries, courts are not qualified to handle technical matters. Nevertheless, it was noted that judges in the United States have always interpreted the language of patents (Gardella and Berger 7). It was held that patent construction necessitates extraordinary training and practice that judges who regularly handle patent cases own. As a result, they are more skilled at comprehending scientific or technical language than the regular juror is. Presuming that this is the case with the Federal Circuit judges – because they routinely deal with patent infringement cases – federal criminal court judges may lack similar expertise, because they handle as many as 90,407 criminal cases in less than a year. To add extra 2,700 cases to their workload would create more pressure on the federal criminal justice system. Federal criminal court judges or magistrates at the trial stage merely cannot dedicate adequate time to the technical complexities intrinsic in patent infringement cases, in addition to their usual workload (Mendez 5).

Any given patent may cover many inventions

An aspect claimed in a patent is not restricted to what is plainly written in the application. A claimed aspect may contain a number of equivalents, some of which may be unknown at the time of filing an application with the PTO (Ghosh 9). Because language is deficient for getting a hold of the aspects of an invention, courts do not put in force the language of the claim plainly so as to estop the patentee from making a claim on the equivalent as part of the patented subject matter. Instead, they depend on existing art to establish if the potentially encroaching invention is, indeed, equal to the claimed invention. Because of the significant flexibility courts apply in interpreting patents, the burden of a criminal penalty for patent infringement may rigorously restrict the authority of trial courts authority to successfully determine disputes. There would lack room for settlements, injunctions, and other remedies (Mendez 5).

Invalidating a patent is the typical defense to infringement

The Patent Act states that a patent is null if it does not adhere to any of the prerequisites imposed by the Act itself (Carrier 12). Criminal penalties, therefore, should not be implemented in the case of patent infringement because the process itself, traditionally speaking, is rigorous, irrespective of the current tendency of courts of holding patents valid (Mendez 5).

It is virtually impossible for law enforcement officers to determine whether any particular product is an infringing product

Law enforcement officers are in general trained in the authority in the apprehension of criminals, criminal procedures, the penal law, and other matters that are concerned with the administration of criminal justice. However, they may not be skilled in the sciences or other technical issues. As a result, they may lack the expertise needed in handling scientific matters. As such, they may not be qualified in making a determination, based on probable cause, that a person is violating a patent. Law enforcement officers may be able to get a judicial establishment of probable cause from a magistrate before apprehending a supposed patent infringer, but then the problem of lack of time on the part of judges may arise. In other words, “judges may not have the time to acquaint themselves with the intricacies of the subject matter relating to a patent infringement suit,” (Mendez 5).

General level of criminality

The WIPO’s Advisory Committee on Enforcement found that “legislatures, the prosecution and courts have to prioritize their work,” and that “IP crimes do not, as a rule, rate high especially in high-crime communities” (Mendez 7). It was noted by the FBI in 2002 that there were roughly a total of 11,877,218 offenses committed in the United States. Out of this number, approximately 1,426,325 were considered as violent. Of the violent crimes, the Department of Justice prosecuted roughly 279 murders, 315 rapes, and 2,070 robberies (Mendez 7). Because of the fact that violent crimes are regarded as the gravest crimes, patent infringement is most likely not regarded as a priority by the federal criminal justice system.

Modern standards of patentability

While a number of adjustments to the patent law have occurred since the first federal patent law was enacted in 1790, the basic conditions of patentability have been extraordinarily well preserved. The present standard asserts that only original, valuable, non-obvious and fully enabled inventions can be patented (Golden 15). The originality condition provides a guarantee that inventions that are already known or accessible to the public remain within the public sphere. For instance, an invention with an expired patent period cannot be patented again. The usefulness condition ensures that patents are given only on creations that can be applied to some significant and profitable use. While the extent of value required to sustain a patent is very negligible, the usefulness condition successfully prevents patents from granting on lighthearted or maleficent creations, for instance those that claim to disregard the laws of physics or whose only utility is an illicit one (Mendez 6). While originality and usefulness are compulsory prerequisites to patentability, they are not adequate.

An invention must also be revealed in order to successfully put it within realistic reach of the public. This enablement condition guarantees that adequate information is revealed during the patent application so that a person who has skills in the applicable art is able to create and utilize the invention. Given that patent applications are in general made obtainable to the public eighteen months after the filing of the application, this information may assist in promoting technological progress through non-infringing utilization of the information even prior to the end of the patent period. The non-obviousness condition thwarts the patenting of small changes of recognized inventions. As with the originality condition, the non-obviousness prerequisite is meant for preventing the extraction of inventions from the public sphere, because those inventions that are plainly original but which would have been apparent to the PHOSITA are already within the reach of the public.

Because of its important role as a caretaker of un-patentable creations, the non-obviousness prerequisite has been named the “ultimate condition of patentability,” (Darrow 3) and no other notion in patent law has stirred more enthusiastic dispute and debate over such long a period of time than the non-obviousness condition. Even though it may be common sense to eliminate small changes of recognized inventions from patentability, the most aggravating element of non-obviousness is not in rationalizing its role but in properly defining the extent of progress needed to deserve patent protection (Park 13). This issue of degree, now tackled by the non-obviousness condition has been put doctrinally in a number of corners of the patent law design throughout the American history. It was only until 1952, after more than one century of percolation in judicial rulings and scholarly literature, that non-obviousness was written as a separate constitutional prerequisite. This section, codified at 35 U.S.C. § 103, now reads:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains…. (Darrow 3)

It is from this statute that the PHOSITA standard was directly derived. No recorded judicial ruling or law review article before the passage of § 103 had utilized the phrase “person having ordinary skill in the art” or the acronym “PHOSITA (Darrow 3).

Inequitable Conduct Doctrine Reform

Every year, the PTO receives hundreds of thousands of patent applicants who try to persuade PTO examiners that their applications adhere to the patentability criteria. Applicants have a natural inducement to hold back information that they think could endanger their opportunity of getting a patent, in the hope that a patent examiner will not discover any compromising information (O’Connor 6). To battle this natural inclination, the PTO created an obligation to reveal information that is substantive to patentability. This obligation of “candor and good faith” is imposed on all individuals handling the PTO during the application process referred to as patent prosecution (Murphy 3). If the PTO examiner asserts that the invention is patentable, a patent is granted. This gives the applicant – now a patentee – the right to leave out the rest from claiming its invention. Patentees can put into effect this right by claiming infringement in litigation to obtain relief through damages or a ban on the infringer’s deeds. On the other hand, supposed infringers can make use of the doctrine of inequitable conduct as a defense. If established, the doctrine makes the whole patent unenforceable. Because of the current contradictory use of the inequitable-conduct doctrine by the Federal Circuit, there is a strong drive for a quick alteration. Nevertheless, it is vital to understand the policy rationales and parties concerned prior to undertaking to rectify the doctrine (Murphy 4).

Policy considerations inherent in the doctrine of inequitable conduct

The intention of granting patents is “to promote the Progress of Science and useful Arts” (Murphy 5). One noteworthy social advantage of the patent system is the writing of the invention. The public obtains access to the invention and at the same time permits the patent holder to have a monopoly and right to leave out the rest throughout the entire patent term. The incompetence of granting a monopoly is one of the social costs that the public has to bear in the event of granting of patents. The “far-reaching social and economic consequences of a patent” give the public a strong incentive to ensure that patents come from “backgrounds free from fraud or other inequitable conduct” (Murphy 5). Another major objective of the patent system is to encourage financial investment into the research and development of patentable innovations. The present different utilization of the inequitable-conduct doctrine by the Federal Circuit, together with the doctrine’s harsh repercussions, may inhibit the strong inducements generated by the ability to patent. Inequitable conduct is still a challenge in patent prosecution. If the doctrine is eradicated, patents gained through fraud or other dishonest ways are likely to be enforceable. Additionally, there is no existing alternative. The doctrine of unclean hands fails because it generally cannot be used by a person who is alien to the supposed misconduct when it takes place (Metzler 9).

Other alternatives for avoiding misconduct during prosecution are also vulnerable to disapproval and are insufficient alternatives for the doctrine. One possibility is to make the PTO accountable for putting into practice the doctrine (Venkatesan 5). Nevertheless, adding obligations to the already burdened PTO will render enforcement less likely and thus less of a restraint to misconduct. In addition, abolishing the doctrine and necessitating defendants to bring antitrust or common law fraud claims would create more workload on defendants. Compared to PTO enforcement or incorporating antitrust/fraud claims, the doctrine of inequitable conduct is valuable because it tackles misconduct more speedily and efficiently. Consequently, tackling the present state of doubt through adjustment of the doctrine, rather than elimination, is a more rational answer (Murphy 6).

Grace Period

The grace period refers to the length of time after revelation of an invention in which the inventor may still submit a patent application and not end the inventor’s right to a patent (Metzler 2). The grace period has been the topic of important debate during the current patent reform. Indeed, former President George Bush noted that his support for recent patent reform efforts was dependent upon other nations’ introduction of a grace period. The gap between the lenient grace period evidenced in the United States and that of chief competitors has for a long time been regarded as a substantive hindrance to global harmonization attempts. Grace periods are viewed as contentious because they offer a comprehensive period of doubt and necessitates that inventors who want to defend their patents overseas be familiar with the grace period provisions of the specific countries.

Grace periods, nevertheless, achieve essential societal objectives that support the advancement of innovative technologies by academic and technical communities. Rather than being the hindrances portrayed by critics, grace periods may be essential in supporting the kinds of revelations required in sustaining academic networks of innovation. Frequently, however, proponents of grace periods do not completely express why these grace periods are essential. The aim of a patent system is to support innovation. Without successive revelation of such innovation, a patent system does not attain another significant goal – the betterment of society through economic growth. Grace periods play a crucial role in the achievement of both (Metzler 2).

Cultivating innovation

Grace periods facilitate the cultivation of innovation, the key objective of a patent system, by guarding and encouraging communication among individuals. Communication among people is important in innovation because ideas can be generated and shared. If one accepts this notion, one should also accept the notion that communication among persons is the motivating force behind innovation. Nevertheless, innovation is not cultivated by local interactions alone, but rather is the outcome of multi-level associations of interaction (Metzler 2).

Innovation and growth: The roles of university and industry

“The interaction among university, industry, and government is the key to innovation and growth in a knowledge-based economy,” (Metzler 3). The protection of innovation at the university level is important because in knowledge-based societies, universities are the main producers of knowledge. Industry is in charge of production, that is, the transformation of knowledge and skills produced at universities into a profitable product. The government contributes to this by setting up the stage for university-industry linkages through adjustments to the patent law.

Protecting innovation at the University level

So as to nurture innovation ingeniously, protection must begin at the university level. As producers of knowledge, it is crucial to provide a fostering setting for universities, one that encourages the essential linkages and provides suitable motivation. To protect sufficiently the linkages in a “publish-or-perish” academic setting, both written revelations and, to some degree, verbal revelations must be guarded. The requirement of publication and the ability and comfort of discussing one’s research with peers are both crucial elements of a scholar’s research and profession. “Academic researchers have historically been compelled to publish the fruits of their scientific research, as publications are the primary basis for promotion, tenure and research funding,” (Metzler 3). Therefore, the achievement of a professor in a research-based sphere appears to originate from the professor’s ability to publish, because publications result in grants, grants facilitate more research, and more research results in additional publications, all of which guide the professor down the path to tenure. Because of the pressure of publishing and the possibility that the professor is not familiar with patent law, a publication may surrender the right to a patent. Thus, it is essential for a grace period to guard printed publications and written revelations of all types.

University-Industry links and transfer of technology

In addition to communications on the university level, linkages among university and industry also play a very important role in innovation. “University-industry links… [serve] as a vehicle for supporting, if not accelerating, technology development” (Metzler 4). Academic scientists cross over the bridge between university and industry by initiating start-ups from their research. Other linkages between university and industry can take the form of a licensing contract in which a company will license a patented technology from a university via a technology transfer department. The drive toward research and its commercialization has obtained greater force, because governments are reducing their appropriations to university budgets and necessitating them to complement their incomes from the earnings of their research, either through knowledge transfer, spinoffs, or equity stakes in start-ups (Metzler 4).

Arguments against a grace period

Opponents of a grace period regard a grace period as containing a damaging impact on both the inventor and on third parties. The grace period is seen as having a harmful effect on the inventor because in first-to-file regimes there is a peril that a dissimilar inventor will file a patent submission during the grace period. The peril is most widespread in hot fields such as technology and in publish-or-perish environments of academia. Opponents of the grace period assert that the risk grows more serious when an inventor wishes to file a patent application overseas in which the country has a different model of a grace period or no grace period at all (Metzler 14). The grace period is viewed as damaging to third parties because it extends the period of uncertainty, that is, the time period between the submission of a patent application and the time when the application is rendered public.

Those who oppose the grace period believe that enhancing the eighteen month period of uncertainty by an extra six or twelve months would interrupt the just balance between the inventor and the public. A number of the main disapprovals of grace periods originate from the difficulty and lack of understanding of the extent of the grace period in the inventor’s own country and those of other countries in which the inventor wants to guard his or her creation. Inventors who want to offer protection to their inventions overseas are required to understand both the grace period of their own country and the grace periods of the other countries in which they want to submit a patent application. Taking into consideration the variety of models of grace periods that regimes have implemented as well as the complexities of each individual grace period, this is no diminutive act. A common grace period, followed by supervision from the globe’s intellectual property experts, would help in solving this challenge.

Proposed grace period provision

An invention will not lose its originality if, during the twelve months that precede the priority date of the application, one of the following takes place: (1) the applicant reveals the invention in a written publication; or (2) the applicant presents the invention and the presentation is founded on a printed publication or presented together with a printed publication (Metzler 16).

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