EPO Consulting on Patent Novelty Grace Periods

The EPO recently announced that it is conducting a survey regarding the EPO’s narrow and strict patent novelty grace period provisions amongst randomly selected European Patent applicants as well as consulting with user and stakeholder organisations.

Currently the grace period provisions for a European Patent (EP) only allow novelty to not be affected by disclosures resulting either from displaying the invention at an officially recognised exhibition or due to evident abuse of the rights of the inventor / applicant / assignee. For EP applications and for national validations of EP applications that received a decision to grant such disclosures are non-prejudicial to the absolute novelty requirement if they occurred no more than 6-months prior to the patent application filing date. The patent law in respect of novelty grace periods for the majority of EPC contracting states is the same as applies under the EPC. However, the patent law of EPC contracting states for patents that enter that state otherwise than via an EP application can be different to the EPC provisions. Some EPC contracting states apply the 6-month grace period in relation to the priority date for the same types of disclosures, while others apply a general grace period in respect of any disclosures by the inventor / applicant / assignee or due to evident abuse of their rights either for of period of 6 months or 12-months prior to the priority date.

Novelty grace periods are not discussed in either the Paris Convention or the TRIPs Agreement. They were provided for in the 2004 draft of the (abandoned) Substantive Patent Law Treaty (SPLT) negotiations. If ratified the SPLT would have required contracting states to apply a general grace period in respect of any disclosures by the inventor / applicant / assignee or due to evident abuse of their rights either for of period of 6 months or 12-months prior to the priority date. Countries outside of the EPC who have amended their patent novelty grace period provisions since the abandonment of the SPLT negotiations have widened rather than narrowed the grace period. In large part this has been driven by regional or trans-national free trade agreements. Of the jurisdictions having high or even moderate levels of patent applications none are subject to patent novelty grace periods that are stricter than those under the EPC. The strictness of the novelty grace period provisions under the EPC has to some extent slowed the rate at which other countries move to a more general grace period in line with the provisions in the draft SPLT as they do not want their nationals to inadvertently miss out on protection via the EPC if grace period provisions are relied upon.

The EPO is expecting to publish the feedback it receives around late Q1 or early Q2 of 2022 and that feedback will provide important input for evidence based decisions. Were a SPLT style general grace period to be more widely applied, particularly in the jurisdictions having moderate to high levels of patent applications, then inventors could test the market before deciding on their filing strategy – although it would still be an approach that is not without risks. If it is decided that the strict novelty grace period provisions in the EPC will remain unchanged it will be interesting to see if any EPC contracting states change their national law in that respect to encourage more direct filings, rather than via the EPO.

Author: Quinn Miller

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