Users respond on grace period for patents

Today the EPO has published the findings of the survey conducted last winter with regard to the novelty requirement under the European Patent Convention (EPC) and the lack of a so-called "grace period"^[1] in the European patent system. The grace period was the starting point for global discussions on the international harmonisation of substantive patent law, and has remained the crux of the exercise. It is especially a debated topic in Europe, since the EPC does not provide a grace period - a major difference with the US system in particular.

Respondents to the survey mostly reported that the strict novelty requirements of the EPC present little or no difficulties. Nevertheless, the survey has also shown the particular needs of the university research sector, particularly in Europe, where academic disclosure can present problems for subsequent patent filings. Moreover, 7% of US applicants reported that pre-filing disclosures have caused their applications to the EPO to fail in the past. Taking the status quo today as a baseline, it is estimated that if a grace period were to be introduced, it would be potentially used for some 6% of applications.

Finally, the ultimate uptake of any future grace period in the European patent system would depend on its design, and particularly, on whether any limitations, declaration requirements or prior user rights were adopted to balance out the system which would then influence whether applicants would modify their disclosure policies and behaviour as a result of the changes in the legal framework.

The study is based on a broad survey of EPO applicants, complemented by user consultations and desk research of the existing literature. It gives the EPO and its stakeholders fact-based evidence on the workings of the European patent system. The results of the study will also contribute to the policy discussions on the international patent system and how it benefits both our applicants and society as a whole.

[1] The grace period is a period of time prior to the filing or priority date of a patent application, during which an inventor can disclose his invention without this destroying the novelty of his invention for patenting purposes. It prolongs (from 18 months to up to 30 months) the period of legal uncertainty during which the public may not be able to assess conclusively whether a disclosure forms prior art or not, thereby increasing the risk of unwilful infringement for third parties. The creation of a grace period therefore entails a trade-off between the flexibility gains it may generate for applicants, and the legal uncertainty experienced by third parties as a result of its use.

Further information: 

Read the full study 

News item announcing the grace period survey (20 December 2021) 

Substantive Patent Law Harmonisation