A Patent Grace Period for the United Kingdom?

The British trade minister Liz Truss recently announced that the UK is seeking to join the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP) trade deal.

The CPTPP includes a number of provisions on intellectual property (IP) and some of these will require changes to existing UK patent law. The CPTPP requires that member states adopt a grace period of 12 months for certain “pre-filing disclosures” to be non-prejudicial (i.e., not taken into account) when assessing the novelty of a later-filed patent application. This requirement is different from the current grace period provisions in the European Patent Convention (EPC) which mostly prevent patents from being granted after an inventor has disclosed their invention.

The implications of the UK enacting the CPTPP grace period provisions in UK patent law are not clear. Unless there is a change in the European Patent Convention, then there will be potential for conflict.

It is probable that the UK will remain a member of the European Patent Organisation and the courts in the UK will need to differentiate between European patents validated in the UK and national patents filed directly at the UK Intellectual Property Office (UKIPO). The CPTPP grace periods will increase uncertainty for both patent holders and others. It will complicate the patent system in the UK.

Currently, the EPO currently has two member states, Turkey and Estonia, which have 12-month grace periods for national patents. Germany has a six month grace period for utility models (“Gebrauchsmuster”).

It is of course possible that the adoption of a UK grace period in line with the CPTPP could actually motivate the EPO to adopt a similar provision in the EPC. Indeed the European Parliament has looked in the past at whether it would be advantageous in Europe to have a grace period as a “safety-net” for research organisations and small and medium-sized enterprises.

If you have any questions about whether your invention might be able to benefit from the grace period in some countries to file a patent, then get in touch here.

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