Not All Grace Periods Are Created Equal: Building a Grace Period From the Ground Up

INTRODUCTION I. VALUE OF GRACE PERIODS A. Cultivating Innovation B. Innovation and Growth: The Roles of University, Industry, and Government 1. Protecting Innovation at the University Level 2. University-Industry Links and Transfer of Technology 3. The Government's Role in Innovation: Bayh-Dole and the Patent Act II. THE USE OF GRACE PERIODS A. Structural Elements of a Grace Period 1. Element One: Type of Disclosures Protected 2. Element Two: Range of Medium 3. Element Three: Who Can Disclose 4. Element Four: Temporal Limit B. How Regimes Have Addressed the Elements of a Grace Period 1. Pro-Inventor Regimes a. Canada b. The United States 2. Harmonizing Regimes a. China b. Japan c. Australia 3. Most for the Benefit of Society Driven Regime--European Patent Convention III. A MODEL GRACE PERIOD: SOLVING THE GRACE PERIOD PROBLEM ON AN INTERNATIONAL LEVEL A. Grace Periods and International Law 1. Paris Convention 2. The Patent Cooperation Treaty B. Harmonization C. Arguments against a Grace Period D. A Model Grace Period 1. Element One: Type of Disclosures Protected 2. Element Two: Range of Medium 3. Element Three: Who Can Disclose 4. Element Four: Temporal Limit 5. Proposed Grace Period Provision CONCLUSION INTRODUCTION The grace period--the length of time after disclosure of an invention in which the inventor may still file a patent application and not terminate the inventor's right to a patent--has been the subject of significant controversy during recent patent reform. (1) Indeed, former President George Bush indicated that his support for recent patent reform efforts was contingent upon other nations' passage of a grace period. (2) The gap between the generous grace period seen in the United States and that of major competitors has long been seen as a substantive impediment to international harmonization efforts. (3) Grace periods are seen as controversial because they provide an extended period of uncertainty and require that inventors who wish to protect their patents abroad be familiar with the grace period provisions of those countries. (4) Grace periods, however, serve important societal goals that support the development of innovative technologies by academic and technical communities. Far from being the impediments described by critics, grace periods may be central to supporting the types of disclosures necessary for sustaining academic networks of innovation. Often, however, supporters of grace periods fail to fully articulate why these grace periods are necessary. This Comment hopes to fill a gap in the relevant literature on grace periods in three ways. First, this Comment explores the primary theoretical justifications for a grace period. (5) Second, this Comment isolates four elements of a typical grace period and then explores how these elements are expressed within different legal regimes. (6) While the grace period has been typically understood as an innovative feature of American patent law, many different approaches to a grace period are actually apparent in other major patent systems, such as the patent systems of China, Australia, and the European Patent Convention (EPC). Third, this Comment proposes an ideal grace period that can serve as a model in substantive harmonization efforts within the international context. (7) I. VALUE OF GRACE PERIODS The goal of a patent system is to encourage innovation, (8) "the reconfiguration of elements into a more productive combination...." (9) Without subsequent disclosure of such innovation, however, a patent system does not achieve another important objective--betterment of society through economic growth. …