Où il est question de Expo 2020 Dubaï et de période de grâce.
F. Leyder (BE)
One of the epi employees recently spent a winter holiday in Dubai, where she visited Expo 2020 Dubai. My thanks to her for providing the photograph accompanying this article.
2020 you would ask? Surely a mistake. Actually not. Like the 2020 Summer Olympic Games, Expo 2020 Dubai was postponed by one year to begin on 1st October 2021.
For European Patent Attorneys, international exhibitions ring a bell: Article 55(1)(b) EPC states that the display of the invention at an official, or officially recognised, international exhibition may constitute a non-prejudicial disclosure. This is one of the many variations of what is generically called a "grace period".
Under Article 55(1)(b) EPC, a disclosure of the invention by the applicant or their legal predecessor is not taken into consideration if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequence, of such display. The Enlarged Board of Appeal clarified in G3/98 that the relevant date is indeed the date of filing of the European patent application, not the priority date.
Article 55(2) EPC states however that this applies only if the applicant states, when filing the European patent application, (i) that the invention has been so displayed and (ii) files a supporting certificate. Rule 25 EPC specifies in particular that the certificate must be issued at the exhibition by the responsible authority, and that it must be filed within four months of filing the European patent application (or when later entering the European phase, if a Euro-PCT application).
The mechanism of Article 55(1) EPC is a safety net. It only ensures that the disclosure at the exhibition is excluded from the prior art, nothing more. Thus, in particular, it does not protect from possible independent inventions or inventions derived from the disclosure. This explains why this mechanism has rarely been used in modern times for a display at an international exhibitionIt seems Article 55(1)(b) has once been used for an invention displayed at Expo 2000 Hannover, but the author has not been able to identify the case from the information shared by the colleague who remembers it.. As displaying in an international exhibition is a voluntary act, there is no doubt that a patent application should be filed beforehand.
How can I find out where and when such an international exhibition takes place? Let's go to the Dubai Bazaar, the place where you find anything and everything. For us European Patent Attorneys, this would be the Guidelines for Examination at the EPO. The Guidelines are now revised (and improved) every year; they have considerably grown over the last years and have become a very comprehensive and most useful tool. There we learn that the exhibitions recognised are published in the Official Journal (A-IV, 3.1; G-V, 4).
A search in the Official Journal, using the keywords Dubai and exhibition, limited to international exhibitions, reveals that every year, an article entitled "Synopsis of the territorial field of application of international patent treaties" appeared in issue n°4, which article mentioned since 2014 an international exhibition in Dubai from 20.10.2020 to 10.04.2021. Every year? Almost, except in 2021, when no updated synopsis was published. Corona effect? Bad luck! That is exactly when the new dates would have been published.
As European Patent Attorneys, we like to know what happens when something goes wrong. "An isolated mistake in an otherwise satisfactory system" are the words that spring to mind. Are there however any consequences?
Article 55(1)(b) EPC refers directly to official, or officially recognised, international exhibitions falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972. The non-publication of the synopsis with the new date for Expo 2020 Dubai is thus unlikely to have adverse consequences in the end (sigh of relief), even if some additional argumentation may be required to convince a Division relying on the Guidelines and the Official Journal.
The first World Expo - the Great Exhibition - took place in London in 1851. The 1928 Convention on international exhibitions regulates these exhibitions. The Bureau International des Expositions is the intergovernmental organisation in charge of overseeing and regulating World Expos; today it has 170 Member States. The complete list of exhibitions can be found on its website: https://www.bie-paris.org.
Let us hope that the Guidelines will in the future directly refer to the website of the Bureau International des Expositions. I would of course welcome if the EPO would in addition resume the annual publication of the synopsis, and insert a specific reference thereto in the Guidelines.
If you visit Expo 2020 Dubai, keep Article 55(1)(b) EPC in mind, but forget the idea that anyone might use it, and enjoy traditional Belgian delicacies at the take away kiosk with fries and wafflesBelgian waffles for foreigners, but Liège waffles in Belgium (gaufres de Liège, Luikse wafels, Lütticher Waffeln) because there exists in Belgium a totally different kind named Brussels waffle.. Beware: international exhibitions may not last more than six months: Expo 2020 Dubai will close on 31st March 2022!