EPO SURVEY ON GRACE PERIOD
1. The European Patent Office published recently the result of a survey regarding a grace period for novelty.
The EPC requires to date strict novelty for the subject matter of EP patents, rendering publication of claimed subject matter before filing of the EP patent application opposable to the patent irrespective of the question whether the publication stems from the applicant.
Other jurisdictions (e.g. US and JP) provide grace period systems that permit obtaining valid patents even if the claimed subject matter was published by the applicant before filing the patent application.
The survey assesses the impact of the current strict system and the possible impact of a system with grace period.
2. Most of the users of the EPO grant system are aware of the constraints and comply if needed by postponing disclosure of an invention. The highest rate of negative impact of the current system is borne by research organizations (universities), due to their need of early publication of research results.
Universities also have the highest rate of EP applications that are prevented due to the subject matter being disclosed before the possibility to file. Second to universities, applications from US companies are prevented due to pre-filing disclosure.
3. European SMEs, universities and Japanese/Korean companies suffer most from postponed disclosures with a negative impact rate of 68%, 71% and 82% respectively.
Public research organizations (PRO), European universities and Japanese/Korean companies are most impacted by pre-filing disclosures with a negative impact rate of 100%, 95% and 99% respectively.
4. The report also presents possible advantages and inconvenients of four grace period systems: an unrestricted grace period system in which the applicant does not need to accomplish any supplementary act in order to benefit from the grace period; a declaration based system in which the applicant has to declare the pre-filing disclosure; a prior user rights system in which use based on the pre-filing disclosure is not infringing; and a safety net system which combines the two latter systems.
Whether the EPC will be amended in the future, and if so in which way, needs to be seen.
The whole survey is available here
This IP Alert is for information purposes only and does not constitute legal advice.