EPO announces consultation on grace periods and novelty

The European Patent Office (EPO) has announced a consultation with applicants on the impact of novelty requirements and lack of grace period in the European patent system. Find out what this could mean for your IP.

Potential change to the European patent system – EPO to assess grace periods

An international research agency has been chosen to survey a randomly selected group of applicants to investigate how novelty requirements are managed, how they affect commercialisation strategies and what effect different types of grace periods might have.

Set to be published in the spring, the results of this study will be used to drive evidence-based discussions that could change the European patent system.

What are grace periods?

A grace period is the length of time, before an application is filed, in which an invention can be publicly disclosed without destroying its novelty. Typically six or 12 months in duration, grace periods are used in other patent systems such as those in the US, South Korea and Japan.

The EPO currently has strict novelty requirements under the European Patent Convention (EPC). Article 54 states that an invention “shall be considered new if it does not form state of the art” — and that ‘state of the art’ includes everything publicly disclosed before the filing date of the application. There are only very limited exceptions, such as disclosures at internationally-recognised exhibitions or due to an evident abuse in relation to the applicant, which are excluded as non-prejudicial disclosures under Article 55.

How could grace periods affect your IP?

The use of grace periods has previously been considered by the EPO. Back in 2012, the Tegernsee Group approved a study into grace periods which compared the European system with that of Japan and the US. A few years later, the Economic and Scientific Advisory Board commissioned a report on the economic impact of introducing grace periods. While the report lacked consensus, they found that grace periods should only be introduced if they “are ‘safety-net’ grace periods” and are “internationally harmonised in the key global patent systems”.

Allowing grace periods in Europe would benefit inventors who are unfamiliar with intellectual property law, as they would be able to disclose an invention without instantly losing novelty. However, grace periods would also increase the uncertainty for freedom-to-operate analyses.

We will keep you updated as this situation progresses. In the meantime, feel free to get in touch with me at ruby.smith@murgitroyd.com if you have any questions.