AIPPI Journal, January 2022

3

Result of Study on Grace Period for Universities,
SMEs and Startups
SHIMIZU Yuki*
TANIMOTO Remi**

1. Introduction
1-1. History of Substantive Patent Law
Harmonization (SPLH)
When industries conduct global
activities, it is important that they be able
to acquire patent rights efficiently inmultiple countries. From the perspectiveof reducing procedural costs, SPLH can
increase predictability of acquiring patentrights and contribute to industries’smoothly conducting activities.
Various initiatives have been
initiated on SPLH. However, since thediplomatic conference1 held in 1991, thediscussion of SPLH in World Intellectual
Property Organization (WIPO) has beensuspended due to a conflict between thefirst-to-file and the first-to-invent
principle.
Under these circumstances, after the
Patent Law Treaty (PLT) 2 was adopted inJune of 2000, it was agreed 3 to resume
the discussion of SPLH at the fourth
session of WIPO Standing Committee on
the Law of Patents (SCP). Since then, at
the SCP sessions, discussions on the

Substantive Patent Law Treaty (SPLT)
were held based on draft articles of thetreaty prepared by the WIPO Secretariat.
Achieving SPLH early will bring
benefits to applicants and respective IP
offices. In light of this, after the above
discussions, the Trilateral IP Offices ofEurope, Japan, and the U.S. reached anagreement to limit the agenda to four
items on prior art-related issues, i.e., thedefinition of prior art, the grace period,
novelty, and inventive step. The Offices
submitted the trilateral proposal 4 , whichstated that the agenda should be limited
to four items, to the tenth SCP session in
May of 2004 and the Assemblies of theMember States of WIPO in September of
2004. While attracting a wide range of
support from developed countries, theproposal did not garner agreement fromdeveloping countries. As a result, noconsensus in WIPO was reached5.
In order to overcome this situation
and advance the discussion, theExploratory Meeting of Interested Parties
Concerning the Future of Substantive
Patent Law Harmonization6 hosted by the* Director, Multilateral Policy Office, International Policy Division, Japan Patent Office** Assistant Director, International Policy Division, Japan Patent Office

4

U.S. was held in February of 2005,
aiming at having a common view indeveloped countries on how to advancethe discussion on SPLH. Starting with
this, meetings of developed countries on
SPLH (Group B+ meetings) 7 have been
held regularly.
At the Group B+ meeting in September 2006, a comprehensive compromise
package was proposed, and it was agreed
to advance work on preparing specificdraft articles of the treaty based on the
package. Furthermore, at the Group B+
meeting in September of 2007, a list ofsome items, including first-to-file principle, subject to future discussions was presented. However, the grace period, prioruser rights, and 18 months publication inparticular became significant issues,
which stagnated the discussion.
On September 16 of 2011, theAmerica Invents Act (AIA)8 was enacted
in the U.S., which includes the change
from the first-to-invent to first-to-fileprinciple. And this enactment raised themomentum for SPLH again. In order toconsider the future of the stagnateddiscussion on SPLH between developed
countries, heads and representatives frompatent offices in Japan, the U.S., andsome European countries including
Denmark, France, Germany and the U.K.
as well as the European Patent Office(EPO: host office) gathered at Tegernsee
in the suburb of Munich and held the first
Tegernsee meeting9.
At the first meeting held in July of
2011, key issues in holding its discussionof SPLH (first-to-file principle, grace
period, prior user rights, scope of prior art,
novelty, inventive step, 18 months
publication, and secret prior application)
were identified. And then, it was agreed
by a group of patent experts to compare

AIPPI Journal, January 2022

systems and practices between eachcountry and region on these key issues.
The Tegernsee meetings were held
five times by 2014. The common and different points with respect to the four
items were analyzed, with fact-based
results obtained from user discussions
conducted by each office. After that, theparticipants made a report 10 and
submitted it to the Group B+ meeting.
Since then, the main place to discuss
SPLH has moved again to the Group B+
meeting.
At the Group B+ Plenary meeting in
September of 2014, a decision was madethat the B+ Sub-Group, whose members
are currently Australia, Canada, Denmark,Germany, Hungary, Japan, South Korea,
Spain, Sweden, the U.K., the U.S. and
EPO, would hold future substantial
discussions. In October of 2015, Group
B+ agreed to the formation of four
workstreams. These workstreams areworking-level projects in which countries
and organizations participate that haveshown interest in the grace period,
conflicting applications and prior user
rights. Preparation of documents began
regarding previously-held discussions,patent systems in each country, andpossible directions. In May of 2016,
documents with outcomes of each
workstream were submitted to the B+
Sub-Group.
In June of 2017, the B+ Sub-Group
held the Users’ Symposium on SPLH in
Munich and had discussions with participants, including users of the Trilateral
Offices of Europe, Japan and the U.S. At
the Group B+ Plenary meeting in Octoberof 2017, it was agreed to advance userdriven discussions so as to propose a
SPLH package, which includes items tobe harmonized as a set, at the Group B+

AIPPI Journal, January 2022

Plenary meeting in 2018.
Then, discussions were made atseveral times at the Group B+ Plenary
meetings and by the Industry Trilateral(the American Intellectual Property Law
Association (AIPLA), the BUSINESSEUROPE (BE), the Intellectual Property
Owners Association (IPO), and the JapanIntellectual Property Association (JIPA)).
After that, the paper titled “Policy andElements for a Possible Substantive
Patent Harmonization Package” 11 was
submitted by the Industry Trilateral in
September of 2020.
1-2. Initiative by Japan Patent Office(JPO)
It is sometimes too strict for an
inventor not to be able to obtain a patent
due to the lack of novelty based on
his/her own publication even if specificreason exits why such publication is
unavoidable. Based on this view, every
country has adopted a grace period thatcertifies exception to the lack of novelty
for a certain period and scope.
As described in the previous subsection, the grace period is positioned as
one of the key items to be discussed at
the Group B+ meetings. However, interms of its length and scope, there arestill differences between member statesof the European Patent Convention andother countries. Some member states
have a relatively shorter duration andnarrower scope, and others have arelatively longer duration and wider
scope.
With regard to the grace period, astudy was conducted in the context of theTegernsee meeting in the past. However,the study was mainly targeted for large
corporations and did not fully reflect
opinions from universities, SMEs, and5startups who inherently need a system ofsafeguards such as the grace period forreports and disclosures at academic conferences, and in press releases.
Considering the fact that key innovators are no longer only large corporations
but also universities, SMEs, and startups,
understanding facts of actual utilizationand difficulties of the grace period isessential for wider users to consider
patent law systems with high level ofconvenience. Additionally, these newstandpoints are important for properly
advancing future discussions on SPLH.
This study on the grace period was
conducted by the JPO that kept theseissues in mind. It was conducted to gather
information on actual utilization anddifficulties of utilization by universities,
SMEs, and startups in Japan and othercountries, especially in Europe.

2. Subjects and methods of the
study
Subjects of the study on the grace
period are universities, SMEs, andstartups in Australia, Canada, Denmark,Estonia, Finland, France, Germany, Japan,
Sweden, the U.K. and the U.S.
The survey was conducted via webbased questionnaires and each officerequested the subjects to respond.
The JPO prepared the questionnaires,paying attention to make sure that thequestions were simple and easy to understand, so that non-experts in IP could
respond. Specific questions are as follows.

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3. Results of the survey
3-1. Number of responses
We received 258 responses to thesurvey. The breakdown is shown in Fig. 1
and Fig. 2.
In the following, the respondents aregrouped into three regions according to
the duration of the grace period. The firstregion is member states of the European
Patent Convention (EPC), which provides
a six-month grace period. The second
region is Japan that extended the grace
period in 2018 from 6 to 12 months. The
third region includes Australia, Canada,
and the U.S., which have a 12-month
grace period.

AIPPI Journal, January 2022

3-2. Analysis
3-2-1. From the standpoint of innovators
In terms of the standpoint of innovators, the questionnaire asked what theinventors’ first responses would be withregard to their research results and new
product development. As shown in Fig. 3,
the majority responded that they would
file patent applications as their first
response. The result shows that many
respondents have filing patent applications in mind.

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Fig. 1: Countries of respondents

Fig. 2: Attributes of respondents

Fig. 3: Answers to “What is your first response to the results of your research or
product development in terms of your information disclosure policy?”

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AIPPI Journal, January 2022

This thinking was shown in all regions
and all organizational types as shown in
Fig. 4 and Fig. 5. In particular, it wasnotable in SMEs and startups who placed
importance on business growth.
Then, to those whose response wasother than “file patent applications” astheir first response, the questionnaire
asked whether there were particular matters that they would consider before
publishing their inventions. The resultshows that many respondents wereconscious of not losing the novelty of
their inventions. For example, they were
careful not to disclose the key parts of

their inventions as shown in Fig. 6.
However, in reality, in some cases,
the respondents had to give up filing
patent applications. When asked whether
they experienced times when they wanted
to file patent applications but could not
do so, more than half of the respondents
responded “yes” as shown in Fig. 7. Also,
more than half of the respondents
expressed that they decided not to filepatent applications or could not do sowhen they published their inventions asshown in Fig. 9. We found many cases
like these, especially in Europe, as shownin Fig. 8 and Fig. 10.

Fig. 4: Breakdown of answers by regions

Fig. 5: Breakdown of answers by attributes

AIPPI Journal, January 2022

Fig. 6: Answers to “Are there particular matter(s) you consider before publishing,presenting or reporting?”

Fig. 7: Answers to “Have you ever faced a situation where you wanted to file apatent application but could not do so?”Fig. 8: Breakdown of answers by regions

Fig. 9: Answers to “Have you ever decided not to file a patent application, or
failed to obtain a patent when you published, presented or reported?”
To those who responded that they

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AIPPI Journal, January 2022

wanted to file patent applications but
could not do so, the questionnaire asked
the reasons why they gave up filing
patent applications. The result describedin Fig. 11 shows that the two major
reasons for this were the inventors’ lackof funds and lack of time.
To those who responded that theywanted to file patent applications but
could not do so, the questionnaire asked
how long they would have needed to filepatent applications after their inventions
were published. As shown in Fig. 12,
more than half of the respondents
expressed their view that they could filepatent applications if they had a one-year

Fig. 10: Breakdown of answers by regions

Fig. 11: Reasons why patent application could not be filed

Fig. 12: Answers to “Were you able to file a patent application within a certain
period after publishing, presenting or reporting?”

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grace period.
For those 158 respondents who
decided not to file a patent application or
failed to obtain a patent when they
published, presented or reported, thequestionnaire asked them in which
regions they were unable to obtain apatent. As shown in Fig. 13 and 14, morethan 40% responded that they wereunable to obtain a patent in Europe.
The result shows that from the standpoint of innovators, they wanted toadvance innovations by filing patentapplications, but in some cases, they had
to give up filing patent applications.
However, they could file patent applications if they had a longer grace period.
0

10

20

3-2-2. From the standpoint of thirdparties
In terms of the standpoint of third
parties, the questionnaire asked whether
respondents used technologies disclosed
by others for their own inventions. The
result described in Fig. 15 shows thatsome respondents actually used technologies disclosed in academic papers, journals, conference presentations, and thelike.
And then, the questionnaire asked
those who responded that they used technologies disclosed by others for their own
inventions how they checked to makesure that their inventions didn’t infringe
patent rights when using those

30

50

60

70

68

Europe45

China
North America

25

Japan

23
14

South Korea

10

Australia
Other

40

2

Fig. 13: Regions where respondents were unable to obtain patents0%Europe

20%

40%

33

60%

17

80%

15

100%

12 3 4 2

EuropeChina
North America

Japan

28

23

8

7

7

50

Japan
South Korea

AU/CA/US

7

5

2

4

4

10

Fig. 14: Breakdown of answers by regions

Australia
Other

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AIPPI Journal, January 2022

technologies. The result described in Fig.
16 shows that many respondents
cautiously made efforts to avoid
infringing patent rights by, for example,
checking patent information published bypatent offices and consulting with experts.
Furthermore, the questionnaire asked
those who responded that they used tech-

nologies disclosed by others whether they
had ever been warned or sued for infringing patents because of using publishedtechnologies of others. Many respondents
expressed that they had no trouble inusing others’ technologies as shown in
Fig. 17.
However, a relatively large number

Fig. 15: Answers to “Do you ever use technology (ies) disclosed by others for yourown inventions?”

Fig. 16: Answers to “How do you confirm that there are no patent right
infringements when using the contents of the presentation?”Fig. 17: Answers to “Have you ever been warned or sued for patent infringement due to your use of someone else’s published technology, thus
making it impossible to continue using the technology?”

AIPPI Journal, January 2022

of
SMEs
and
startups,
patentprofessionals, and law firms responded
that they had some trouble as shown in
Fig. 18. Patent professionals and law
firms were likely to have trouble becauseof their ways of doing business.
In addition, a relatively large numberof European respondents have experienced some trouble as shown in Fig. 19.
Further study may be necessary toanalyze the reason.
3-3. Summary
The results of this study survey show
the following three trends.
The first is many respondents havepatent applications in mind and are conscious of not losing the novelty of theirinventions. The basis for the first one is
as follows. One is, as shown in Fig. 3,that about 70% of respondents expressed

13

that they would file patent applications as
their first response when the questionnaire asked “What is your first responseto the results of your research or productdevelopment in terms of your information
disclosure policy?” Another is, as shownin Fig. 6, even respondents whose
response was other than “file patentapplications” as their first response, manyof them were conscious of not losing thenovelty of their inventions. For example,
they were careful not to disclose the key
parts of their inventions.
The second is, in reality, some
respondents had to give up filing patentapplications due to lack of funds and/or
time, and such cases could have been
avoided with a one-year grace period.
The basis for the second is as follows.
One is, as shown in Fig. 11, of those who
responded that they wanted to file patentFig. 18: Breakdown of answers by attributes

Fig. 19: Breakdown of answers by regions

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applications but could not do so, about
60% expressed this was due to lack offunds and about 20% said this was due tolack of time. Another is, as shown in Fig.
12, more than half of the respondents
responded that they could file patentapplications if they had a one-year grace
period.
And the third is many respondents
are likely to rely on publishedtechnologies, but take specific actions to
avoid infringing patents. As a result, there
have not been so many conflicts. The
basis for the third is as follows. One is, as
shown in Fig. 15, that some respondents
actually used technologies disclosed inacademic papers, journals, conference
presentations, and the like. Another is, as
shown in Fig. 16, that many ofrespondents who used technologies
disclosed by others for their own
inventions cautiously made efforts toavoid infringing patent rights by, forexample, checking patent information
published by patent offices andconsulting with experts. The other is, as
shown in Fig. 17, nearly 90% of
respondents expressed that they had
never been warned or sued for infringing
patents because of using publishedtechnologies of others.
Based on these findings, many respondents have patent applications inmind from the beginning and it seems
that the need for the grace period is low.
On the other hand, this study shows thatin some cases, respondents had to give up
filing patent applications; but that suchcases could have been avoided with a
one-year grace period.
In addition, from the standpoint of
third parties, the presence of the grace
period increases uncertainty of whether apublished invention will be granted a

AIPPI Journal, January 2022

patent right. In this regard, the study
shows that there have not been so manycases where conflicts actually occurredbecause many respondents who usedtechnologies that had been disclosed byothers had taken steps to avoid trouble.
Given this, we believe that implementing
the grace period is not likely to bringmajor disadvantages to third parties.

4. Way forward
As described above, the patentharmonization package was submitted by
the Industry Trilateral. The details of the
package was presented to the Group B+
members only. However, its embargo
was lifted prior to the Group B+ meetingin October of 2021. Going forward, it isanticipated that based on this package,discussions in this regard will be held bya wide range of stakeholders in eachcountry. The grace period is one of the
key issues in this package as well. The
Japan Patent Office would like to makeuse of the results obtained from the study
in future discussions.
In October of 2021, Mr. Pascal Faure,Director General of the National Instituteof Industrial Property of France (INPI),
was appointed to Chair of the Group B+
meeting. Under the new Chair’s
leadership, we hope that the results of thisstudy will advance the discussion basedon practical perspectives of the grace
period at the Group B+ meetings.

5. Acknowledgement
In conducing the study on the grace
period, the JPO would like to extend ourappreciation to the following offices andan individual for their great effort andcooperation in identifying the subjects

AIPPI Journal, January 2022

and distributing the questionnaires: theFederal Ministry of Justice and Consumer
Protection of Germany (BMJV), theCanadian Intellectual Property Office(CIPO), the Danish Patent and Trademark
Office (DKPTO), the Estonian Patent
Office (EPA), the European Patent Office(EPO), the INPI, the IP Australia, theFinnish Patent and Registration Office(PRH), the Swedish Intellectual Property
Office (PRV), the Intellectual Property
Office of the United Kingdom (UKIPO),
and the United States Patent andTrademark Office (USPTO), as well as
Mr. Peter Strömbäck, former Chair of theGroup B+ meeting, who led the Group
B+ discussion over the past two years
from 2019 to 2021 and expressed understanding for conducting the study.
(Notes)
1

2

3

4
5

6

7
8

Records of the Diplomatic Conference for theConclusion of a Treaty Supplementing theParis Convention as far as Patents are
Concerned,
https://www.wipo.int/edocs/pubdocs/en/wipo_
pub_351.pdf
Diplomatic Conference for the Adoption of the
Patent Law Treaty,
https://www.wipo.int/meetings/en/details.jsp?
meeting_id=4057
Standing Committee on the Law of Patents,
https://www.wipo.int/meetings/en/details.jsp?
meeting_id=4203
WO/GA/31/9,
https://www.wipo.int/edocs/
mdocs/govbody/en/wo_ga_31/wo_ga_31_9.pdf
WO/GA/31/15, para. 142,
https://www.wipo.int/edocs/mdocs/govbody/en/wo_ga_31/wo_ga_31_15.pdf
Statement of Intent re: Patent Law Harmonization - 08FEB2005,
https://www.uspto.gov/about-us/newsupdates/statement-intent-re-patent-lawharmonization-08feb2005
Group B+ website: https://www.epo.org/lawpractice/harmonisation/group-b-plus.html
Public Law 112 - 29 - Leahy-Smith America
Invents Act,

15

https://www.govinfo.gov/app/details/PLAW112publ29
9
The Tegernsee process website:
https://www.epo.org/law-practice/harmonisa
tion/tegernsee-process.html
10Consolidated Report on the Tegernsee User
Consultation on Substantive Patent Law
Harmonization,
https://www.jpo.go.jp/news/kokusai/tegernsee/document/5_tegernsee/final_report.pdf
11
Policy and Elements for a Possible Substantive
Patent Harmonization Package,https://documents.epo.org/projects/babylon/ep
onet.nsf/0/9EF8B11CA78E51E8C1257E6D00
5706F4/$File/industry_trilateral_elements_pap
er_of_september_2021_en.pdf