Asian patent applicants looking to enter the European Market often make the mistake of assuming their USPTO experience can be applied to the EPO. But fundamental differences exist in policy, regulations and procedure. Case in point: Novelty Grace Periods. In short, unlike the US system, the EPO provides no grace period for novelty, so if an invention is disclosed before filing, the EPO will consider it prior art!

The EPO does, however, provide some leeway in the form of a 6-month grace period, albeit only for two rare situations: the first situation, unintentional disclosure, is if the disclosure was due to "evident abuse"—such as a partner or employee who reveals an invention despite signing a non-disclosure agreement. The second situation, intentional disclosure, applies only to inventions that were disclosed to display at an international exhibition. In this article, we will focus on the second situation—disclosure at an international exhibition.

If you display your invention at an international exhibition, you can, within 6 months, file an application at the EPO, and the examiner cannot use this disclosure against your application. But what exactly is an international exhibition? And what procedures are required?

EPO guidelines state that an international exhibition is one that has been registered with the International Exhibition Bureau (BIE). The EPO publishes a list of these exhibitions in their official journal every April. This year's issue lists the following exhibitions:

01.05. – 31.10.2010	Shanghai (CN)	Better City – Better Life
05.04. – 21.10.2012	Venlo (NL)	Floriade 2012 – Living Nature (world horticultural exhibition)
12.05. – 12.08.2012	Yeosu (KR)	The Living Ocean and Coast: Diversity of resources & sustainable activities
01.05. – 31.10.2015	Milan (IT)	Feeding the Planet, Energy for Life

Obviously, official international exhibitions don't come along very often. But with so many exhibitions going on in the world, and many of them "international" in the sense that companies and attendees come from all around the world, why don't exhibitions like Computex or Consumer Electronics Show (CES) qualify?

The reason lies in founding tenets of the BIE by convention signed in Paris in 1928 (not be confused with the Paris Convention regarding protection of intellectual property signed in 1883).

An exhibition is a display which, whatever its title, has as its principal purpose the education of the public: it may exhibit the means at man's disposal for meeting the needs of civilization, or demonstrate the progress achieved in one or more branches of human endeavour, or show prospects for the future.

- 1928 Paris Convention, Article 1

Furthermore, the BIE does not administer:

• Exhibitions lasting less than three weeks
• Fine arts exhibitions
• Exhibitions of an essentially commercial nature

Therefore, recognized international exhibitions must be educational in nature, non-commercial, and last a substantial time period. Exhibitions like Computex obviously do not qualify.

So what if you do have the fortuity to have participated and demonstrated your invention (before filing an application at the EPO) in one of the few officially recognized international exhibitions?

According to EPO Article 55(1)(b) and (2) Rule 25, the applicant must submit a certificate of exhibition within 4 months from filing of the application. This certificate must:

1. have been issued during the exhibition by the designated authority responsible for IP protection.
2. state that the invention was exhibited at the exhibition
3. state the opening date of the exhibition and the date of the first disclosure, if different from the opening date of the exhibition
4. include identification of the invention, which has been authenticated by the designated authority for IP protection.

So even in this situation, an applicant must very clearly know what he is doing and fully understand the procedures involved in to protect his invention. In addition, since at the exhibition the invention must also be functional, unless the application is still in drafting stages, any patent agent would recommend filing the application first! Early disclosure simply to demonstrate an invention at an exhibition, no matter how big and important, is simply not worth the risk.