A fundamental feature of patent law is that if an invention was known to the public before the filing date (or priority date) of the patent application, the invention lacks novelty and so is not patentable.
A grace period is a period of time before the filing date of a patent application, during which it is possible for that invention to be publicly disclosed (for example, in a scientific publication, at a trade show, or by accident) without losing its novelty, so that the invention remains patentable.
Several jurisdictions around the world, including the US and Japan, have a grace period provision as part of their law. But there is currently no grace period for patents in Europe.
The European Patent Office’s Economic and Scientific Advisory Board (ESAB) recently issued a statement on the possible introduction of a grace period in Europe, which can be found here. The ESAB was set up in 2011 to address important economic and social issues relating to the patent system and to support the EPO with evidence based policymaking.
The ESAB members did not reach a consensus about whether a grace period for Europe was desirable in principle. But they did agree that Europe should consider introducing a grace period only if two vital conditions are met:
- The grace period must be a “safety-net” grace period, which would reduce the consequences of accidental disclosure, allow early academic publication and simultaneously limit legal uncertainty; and
- The grace period must be internationally harmonised in the key global patent systems, including at least the US, Japan, Korea and China, and possibly India and Brazil.
The statement also says that a complete assessment of the economic effects of a grace period on economic outcomes is not feasible at this point. But the ESAB did commission evidence-based economic analysis of the impact of the potential introduction of a grace period in Europe carried by Europe Economics, which can be found here. This study concludes that most users of the European patent system are in favour of a grace period in principle. Support is weakest amongst large companies and European respondents.
Given the conditions that the ESAB has placed on the introduction of a grace period, particularly in relation to international harmonisation, it is unlikely that a grace period will be introduced by the EPO any time soon. However the efforts of the EPO in looking at the question is certainly welcome, and offers some hope to the SMEs and universities that would most benefit from a grace period.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.