The European Patent Office has started a study to see whether a so-called “grace period” should be introduced into the European Patent system. Currently, the novelty requirement under the European Patent Convention (EPC) set out in Article 54 is an absolute novelty standard under which any disclosure made by the inventor before an application is filed is considered to destroy the novelty of the patent application and means that a patent cannot be granted. The only exception to this strict rule is set out in Article 55 EPC if the disclosure was a result of an evident abuse in relation to the applicant (or its predecessor) or due to a display at an officially recognised international exhibition. The first exception (evident abuse) occasionally plays a role when a third party, such as a potential client or cooperation partner, discloses details of the invention despite the presence of a non-disclosure agreement. The second exception (display at an exhibition) is rarely invoked because very few international exhibitions are listed and most applicants interested in international patent protection will have filed for patent protection before the exhibition took place.
Other countries, such as the United States, Australia or Japan, have a so-called “grace period”. This is a twelve-month period (in some countries six months) during which the inventor/applicant can still file for patent protection despite having released details of the invention. This means, for example, that details of an invention could be presented at a conference and, if sufficient interest was found to commercialise or otherwise exploit the idea, the inventor could still file for patent protection. Similarly, white papers could be released online at an early stage without prejudicing the chances of getting a patent and interest in the concepts in the white papers could be ascertained before the expense in filing a patent application was incurred. The concept of the grace period for applications for national patents and utility model protection exists in Europe. For example, German utility models (Gebrauchsmuster) have a six-month grace period before filing during which disclosure of the invention by the inventor (or their employer) is not relevant to the assessment of the validity of the utility model.
Opponents of the grace period have in the past argued that the current “first-to-file” system increases legal certainty about the ownership of a patent and would lead to more litigation about the ownership of inventions. It is also argued that there is no clear evidence to suggest that the introduction of a grace period would be beneficial to European inventors.
The aim of the EPO’s study is presumably to try and obtain evidence to understand the impact that a grace period would have on European inventors and the commercialisation of inventions. The report is due to be published in the Spring of 2022 and there will hopefully be an opportunity to comment on the results before any changes are introduced.