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The European Commission has rejected a proposal that Europe should unilaterally adopt a ‘grace period’ allowing researchers and inventors to file for a patent up to a year after publishing a discovery.

At present, a patent has to be applied for before publication. This contrasts with the situation in the United States, where a 12-month post-publication grace period exists, and a committee of the European Parliament has recently proposed that a similar measure be introduced in Europe.

But a public meeting on the issue organized in Brussels on Monday (5 October) by the European Commission heard industry's view that such a move would be a backwards step. The industrialists agreed that the idea appears superficially attractive, particularly to scientists who have rushed into print before realizing that this sabotages their future patent rights.

But the industrialists say it would disadvantage small companies and academic researchers, particularly as it would open the door to expensive litigation. Many, including the British Technology Group (BTG) and the Union of Industrial and Employers’ Confederations of Europe (UNICE), are concerned that a grace period would encourage more researchers to publish before patenting, ignoring the fact that this would open their claims to greater contention.

Whereas priority is attributed in Europe on a clear ‘first to file’ basis, the US system is based on ‘first to invent’. The legal ambiguities that this can create inevitably lead to expensive legal squabbles to establish the paternity of inventions. The United States is the only country to have such a system.

The ‘first to invent’ system “makes lawyers very rich and unlucky inventors very poor,” says Sue Scott, technology licensing officer of BTG, arguing that the cost of meeting a legal challenge can easily run into “six figure sums”.

Patenting before publishing is always a more prudent strategy, argue BTG and UNICE. They point out, for example, that if European inventors published details of their inventions before patenting these, a third party might publish, and apply for patents, on minor modifications that the original inventors might have intended to patent.

Worse, third parties might republish the original invention within the grace period in a form where the copying was not apparent, in a bid to obtain patents. Whatever the drawbacks of the existing European system, it has the advantage of being clear cut. Introducing a “grace period” would only “complicate the current system,” says Jérome Chauvin, an adviser to UNICE.

BTG agrees that adoption of a grace period by Europe would be a retrograde step for inventors, and should not be taken unless the United States adopts a first-to-file system.

As the result of a hearing, the commission has abandoned the idea of a grace period “in the near future”, according to one official, adding that Brussels will direct its efforts to educating inventors better on the pitfalls of patent law.