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Will the European patent system embrace grace periods?

The European Patent Office is conducting a survey of European patent applicants, to assess the impact of the EPO's strict novelty requirement on applicants' disclosure and commercialisation strategies.  In particular, the EPO wishes to assess what impact different grace period scenarios might have on the commercial behaviour of patent applicants.  Other patent systems, notably that in the US, allow for grace periods, which proponents argue allow inventors to test their inventions in the marketplace before committing to the time and cost of filing patent applications.  On the other hand, a strict novelty requirement for patentability can provide greater certainty to the patent granting process.

Were this survey eventually to lead to the contracting states to the European Patent Convention agreeing to introduce grace periods for European patents, that could have a particular benefit for the United Kingdom.  The UK has begun talks to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), a free trade alliance of Asian and Pacific countries.  The CPTPP agreement requires participating countries to have a 12 month grace period for patent applications.  Were the UK to join the CPTPP and be subject to this requirement, it appears that it could potentially apply such a grace period to UK patents granted by the UK Intellectual Property Office but not, as things currently stand, to UK validations of a European patents obtained through the EPO.  Thus, the availability of patent protection in the UK could depend on which type of patent was applied for: national or European.  However, if the EPC states were also to adopt a grace period of the same length, this discrepancy would disappear.

EPO consults users on grace periods for patents 20 December 2021 A randomly selected group of applicants for European patents are being surveyed this winter on the novelty requirement under the European Patent Convention (EPC) and the lack of a so-called "grace period" in the European patent system. The survey, which will explore the impact of the strict novelty requirement on the filing and business practices of EPO applicants, will be complemented by a consultation of user and stakeholder associations. The resulting feedback, which will be analysed by the EPO and published in a study in the spring of 2022, will provide important input for evidence-based discussions.


european patent validations, patents