Could a grace period for patent filings be introduced into the EPC?

Author: Richard Sulston
IP News

Any publicly available, enabling disclosure that occurs before the filing or priority date of a patent application before the European Patent Office (EPO) is currently novelty destroying (unless there has been a breach of confidence). A grace period in which a patent application can still be filed following a disclosure of the invention by the applicant itself exists in a number of countries but there is no equivalent provision in the European Patent Convention (EPC). In June 2022, the EPO released a report reviewing the impact that implementing a grace period in Europe would have for applicants. The purpose of the review was to provide an evidence-based assessment for the potential economic impact of the introduction of a grace period in Europe.

Grace periods exist in many national patent systems including the USA, Canada, Japan, Korea and Australia, with Europe and China having no grace period and therefore a very strict assessment of novelty. There is little harmonisation amongst countries which have a grace period, with variations in length of the period, the date from which the grace period is calculated and the extent to which the grace period can be used. Presently, some EPC member states already operate a grace period; these are Estonia, Latvia, San Marino, and Turkey.

In the review, the EPO identified three major reasons why an applicant might make use of a grace period; these are:

• A safety net allowing for filing of a patent application following an accidental disclosure of an invention
• The ability to publish scientific research results before a patent application is filed
• Proactive use of the grace period to use or sell an invention for business purposes prior to filing a patent application

As part of the review, European and international applicants were surveyed to assess their attitudes and motivations regarding grace periods. Nearly half of respondents in Europe cited the safety net against accidental disclosure as being their main motivation for desiring a potential grace period. Conversely, respondents in the USA and Japan showed greater motivation to use the grace period for publication of research and proactive use or sale of an invention. This result is likely reflective of the current attitudes of European applicants who have had issues with accidental disclosures precluding patent applications. Should a grace period be introduced in Europe, it appears likely that applicant attitudes would shift to mirror those in the USA and Japan.

The main motivation for introducing a grace period in Europe would be to generate economic benefits. For example, European universities would be free to develop and commercialise science-based inventions without the fear that disclosures may prevent subsequent patent applications. However, whilst grace periods are generally useful to an applicant, they also increase legal uncertainty and complexity when evaluating freedom to operate and when engaging in litigation. Over 40% of respondents expected that the introduction of a grace period would increase the costs of both freedom to operate opinions and litigation.

The impact of the strict novelty requirements in Europe was assessed in the review by surveying small and medium sized enterprises (SMEs) versus larger companies. It was found that more than a third of SMEs and more than half of other companies reported cancelation or postponement of a disclosure in the past three years to prevent the disclosure destroying the novelty of an unfiled patent application. The cancellation or postponement of a disclosure was mostly commonly reported to have had no serious consequence, however 15% of businesses reported lost commercialisation opportunities and 13% of SMEs reported loss of financial opportunities.

Research institutions were also surveyed as part of the review, including both universities and private research organisations (PROs). For both universities and PROs, academic publications and conferences comprised the majority of prefiling disclosures made by these organisations. Over two thirds of research institutions reported having to postpone or cancel a disclosure to comply with the novelty requirements before the EPO, with reputational damage being reported as the major consequence of this postponement or cancellation.

Over 50% of PROs and over 60% of universities reported that they had been prevented from filing a patent application due to a pre-filing disclosure, with the major consequence of this being the prevention of commercialisation of an invention or preventing further development of an invention.

It was estimated that if a grace period were to be introduced in Europe, it would result in approximately 10,000 applications annually using the grace period, half of these being as a result of an accidental disclosure and the other half following a deliberate and proactive use of the grace period. It was also estimated that applicants from the USA would be the largest group using the grace period, followed by applicants from Europe.

A number of options for implementing a grace period were assessed, including a US style system. This was predicted to predominantly benefit applicants from outside Europe whilst also having the largest impact on freedom to operate within Europe. Therefore, balancing mechanisms to regulate the use of a grace period were evaluated, including a declaration requirement as found in Japan and Korea or a prior-use rights model used in Australia. It was found that any balancing mechanism would reduce the legal uncertainty within Europe but would also reduce the number of applicants making use of the grace period.

There is clearly a desire from applicants for the introduction of a grace period in Europe, particularly applicants from the USA. However, the review also revealed significant apprehension amongst European applicants that a grace period would introduce much greater legal uncertainty and costs. There was particular emphasis from a number of EPO user associations that the first-to-file system must not evolve into a first-to-publish system. As such, the EPO concluded that any grace period in Europe should be tempered by significant balancing measures. Such measures might make the grace period available to only a specific sector of applicants such as those conducting academic research and clinical studies, which would appear to have the greatest scope to benefit from such a change.

In summary, the review found that the benefits of the introduction of a grace period in Europe would include greater international patent law harmonisation and a potentially improved patent system for applicants. However, a grace period would decrease legal certainty for businesses and individuals operating in Europe. Accordingly, any grace period introduced in Europe would likely be designed to include several balancing measures to protect European stakeholders and benefit only the applicants most in need. No introduction of a grace period has been formally proposed for the EPC and so any changes that might be made cannot be expected to occur any time soon. As such the need remains for strict avoidance of prefiling disclosures in Europe, at least for the time being.

The full report can be found here.

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