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Study on the grace period for patents made by EPO

July 26, 2022

The grace period is a mechanism existing is a few jurisdictions, such as the US, Japan and South Korea, for their national patent applications, which allows inventors to file a patent application even if they have publicly disclosed it, provided that such disclosure was made within the grace period.

In other words, during the grace period, inventors can publicly disclose their invention without this destroying the novelty of the invention described in the patent application filed in any of those few jurisdictions.

The European Patent Office (EPO) does not contemplate any grace period, but to evaluate the risks and benefits of the inclusion of such a grace period in the European patent system, and, in general, in any international patent system, it has conducted a study including an extensive survey of a random sample of EPO applicants. The survey focused on the absence of a “grace period” under the EPC (European Patent Convention), and on evidence of the actual behaviour of those applicants rather than on their opinions or preferences.

The results of the study have been recently published (https://www.epo.org/news-events/news/2022/20220617.html).

The study notes that grace periods extend the period of legal uncertainty from 18 months to up to 30 months, during which the public may be unable to assess whether a disclosure is prior art or not – increasing the risk of unintentional infringement. This is because patent applications are published 18 months from their filing date, so a third party only has to wait those 18 months to find that publication and thus be aware of the existence of that patent application, for example not to infringe it. However, if that patent application was filed in a jurisdiction having a grace period mechanism, for example a 1-year grace period, an invention could be publicly disclosed and the patent application for that invention could be filed after 12 months from that public disclosure, which means that a third party would have to wait a further 18 months to find that patent application published, which amounts to 30 months.

On the other hand, a grace period mechanism increases flexibility for applicants regarding when to publish and when to file patent applications.

Therefore, there is a balance between negative consequences and benefits.

The results of the study show that only a small minority of EPO applicants would benefit from such a grace period mechanism, but also that the lack of a grace period prevents universities and research institutions from commercializing some of their research.

Specifically, the vast majority of European users are satisfied with the absence of a grace period in the EPC, and only about 6% would use a grace period if available. However, while only around 7% of European patent applications are prevented by a pre-filing disclosure, 46% of those patent applications correspond to US respondents and 30% to Japanese or South-Korean respondents.

A grace period would certainly increase the number of patents obtained in Europe by universities and research institutions, but it would also create legal uncertainty for all users of the patent system.

Therefore, this will be a more long-term issue to discuss, and it is not expected that the EPO incorporates the grace period into the EPC in the short term.

Article by Joaquim Ferrer published on the ElDerecho.com website on July 22, 2022

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