EPO Launches Consultation on Grace Periods

The EPO has launched a user consultation into the desirability of introducing a "grace period" into the European patent system.

At present, the European Patent Convention (EPC) specifies in Article 54(2) that the state of the art for the purposes of assessing novelty shall comprise "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application". Although Article 55 EPC provides for such disclosures to be "non-prejudicial" under very limited circumstances, namely where there has been an "evident abuse" or display at certain international exhibitions, there is no more general grace periods in relation to inventor disclosures under the EPC. The strict novelty requirements of the EPC have historically been considering to provide desirable legal certainty for users of the patent system and third parties.

By contrast, many other countries, most notably the USA, allow inventors to disclose their invention during a "grace period", typically six or twelve months, prior to filing the patent application. The availability of such grace period is often considered advantageous, in that it can protect applicants from unintentional disclosures or disclosures by inventors unfamiliar with patent legislation. However, even within the subset of countries that do provide grace periods, there is divergence in the length of the grace period and the circumstances under which it applies.

The lack of international harmony in relation to grace periods for inventor disclosures means that applicants with global patent portfolios may need to devise complex filing strategies in cases where there has been an inventor disclosure, in order to take into account the divergent status of the inventor disclosure as prior art in each country of interest. Consequently, patents of different scope will typically be granted in each country, despite the underlying invention being the same.

There has been a general move towards increased harmonisation of national patent systems in recent years, and grace periods are one area where better harmonisation would certainly seem desirable. It will therefore be interesting to see the outcome of the current user consultation, and in particular whether it recommends that the EPC does introduce a grace period. The results are expected in spring 2022.