Not all grace periods are created equal: building a grace period from the ground up.

• Author: Metzler, Renee E.
• Position: COMMENTS

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)

1. 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. Grace periods play an important role in accomplishing both.

   A. Cultivating Innovation

   Grace periods aid in cultivating innovation, the primary goal of a patent system, by sheltering and promoting interaction among individuals. Interactions among individuals are crucial to innovation because "[i]deas beget ideas." (10) If one accepts the view that ideas beget ideas, that is, the sharing and discussing of ideas leads to more ideas, one should also accept the view that interaction among individuals is the driving force behind innovation. (11) Innovation, however, is not cultivated by these "local interactions" alone, but rather is the result of multi-level networks of interaction. (12)

   For a better understanding of multi-level networks, describing and drawing an analogy between Randall Collins' general theory of interaction rituals and scientific development is useful. According to Collins, the lowest level of interaction, and of intellectual networks, is the "local situation." (13) In the realm of scientific development, a local situation would be comparable to a scientist in an academic research laboratory interacting on an individual, experimental level. (14) These local situations are the basis of an "interaction ritual." (15) Collins describes an interaction ritual as "a group of at least two people ... physically assembled ... focus[ing] attention on the same object or action." (16) In addition, individuals in an interaction ritual "share a common mode or emotion," "are temporarily united in a shared reality," "feel they are members of a group, with moral obligations to one another," and "are filled with emotional energy, in proportion to the intensity of the interaction." (17) Examples of interaction rituals in the scientific realm would be discussions among two or more scientists from a research group and the attendees of a lecture or conference.

   Collins then applies his general theory of interaction rituals to intellectuals. Unlike other interaction rituals, "[interaction rituals] of intellectuals are those occasions on which intellectuals come together for the sake of their serious talk...." (18) Although intellectuals tend to be focused on the written word, (19) "[i]ntellectual life hinges on face-to-face situations because interaction rituals can take place only on this level." (20) The importance of discussions, conferences, and lectures is that they assemble intellectuals focused on a particular area of study and provide a medium for the interaction rituals. (21) Because a speaker's presentation or lecture at a conference is typically based on an already published or soon to be published text, it is important for both the text and the presentation itself to be protected. (22)

   Collins' interaction rituals theory provides a foundation for understanding the merit of interactions in innovation and growth and the important players.

   B. Innovation and Growth: The Roles of University, Industry, and Government

   "The interaction among university, industry, and government is the key to innovation and growth in a knowledge-based economy." (23) Protecting innovation at the university level is crucial because in knowledge-based societies, universities are the principle generators of knowledge. (24) Industry is responsible for production, i.e., transforming the knowledge and expertise generated at universities into a marketable product. (25) The Government contributes by "setting the stage for university-industry interactions through changes in the patent law...." (26)

   1. Protecting Innovation at the University Level

   In order to cultivate innovation resourcefully, protection must start at the university level. As incubators of knowledge, it is important to provide a nurturing environment for universities--one that promotes the necessary interactions and provides appropriate incentives. To protect adequately the interactions in a "publish or perish" academic environment, both written disclosures and, to some extent, oral disclosures must be protected.

   The necessity of publication and the aptitude and luxury of discussing one's research with colleagues are both important aspects of a scholar's research and career. "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." (27) Thus, the success of a professor in a research-based field seems to stem from the professor's ability to publish, as publications lead to grants, grants sustain additional research, and more research leads to further publications, all guiding the professor down the path to tenure. Due to the pressure of publishing and the likelihood that the professor is unfamiliar with patent law, a publication may forfeit the right to a patent. Therefore, it is important for a grace period to protect printed publications and written disclosures of all forms.

   In addition to publishing, discussing with colleagues and presenting one's research are significant facets in furthering a professor's research and career. As discussed in Part I.A, supra, valuable interactions occur on all levels. Members of the same research team must be able to speak candidly with one another regarding their research as well as with other colleagues. The ability to present one's research is also an important part of the presenter's individual research progression and advancement of the respective technology. In addition, "[a]n invitation to speak, like journal publications and external funding, is another indicator of a professor's success in research." (28)

   2. University-Industry Links and Transfer of Technology

   In addition to interactions on the university level, interactions among university and industry also play an imperative role in innovation. "[U]niversity-industry links ... [serve] as a vehicle for supporting, if not accelerating, technology development." (29) Academic scientists span the bridge between university and industry by founding start-ups from their research. (30) Other interactions between university and industry take the form of a licensing agreement wherein a company will license patented technology from a university through a technology transfer office. "The push toward research and its commercialization ... has acquired greater force, because governments are...