EPO publishes results of patent grace period survey

On June 17, 2022, the EPO released the results of a survey it conducted last winter to understand the impact of the novelty requirements of the European Patent Convention (EPC) on its users. In particular, the investigation focused on the lack of a “grace period” under the EPC. The study draws on empirical evidence gathered from a random sample of applicants who filed patent applications with the EPO in 2018, 2019 and 2020, seeking to focus on evidence of actual respondent behavior rather than on their opinions or preferences.

Under the EPC, an applicant is only entitled to protection for an invention based on material which has not been previously disclosed, including by the applicant, except in certain circumstances, for example where the disclosure is made public following a breach of trust. However, other jurisdictions allow a time limit, a grace period, during which an inventor may disclose his invention before the filing or priority date of a patent application without destroying the novelty of his invention to the application. The EPO report notes that grace periods extend the period of legal uncertainty from 18 to 30 months, during which time the public may be unable to establish whether or not a disclosure is prior art, which increases the risk of inadvertent infringement. This negative consequence offsets the benefit of increased flexibility for applicants as to when to publish and when to file patent applications.

The EPO’s newsletter, reporting on the publication of the results, concluded that the vast majority of European users are content with the status quo and that only around 6% would use a grace period if there is had one. However, the EPO’s newsletter highlighted the exception among US applicants, stating that among US applicants, just over 7% reported that pre-filing disclosures had led to their application failing. with the EPO in the past. The report itself indicates that while just over 7% of EP applications are prevented by pre-filing disclosure, 46% of US respondents say they have been prevented from filing a European patent application.

The United States, Japan and South Korea, in particular, all provide a grace period for their domestic filings and, unsurprisingly, American, Japanese and Korean companies show a higher share of applications prevented by pre-filing disclosures. filing than applications filed following the deferral of disclosures.

However, the EPO noted the particular needs of the academic research sector and the impact on academic disclosure on subsequent potential patent filings. Indeed, the estimated impact of the strict novelty requirement under the EPC was estimated to be greater on European universities than on US companies, with a larger share of EP applications prevented by prior disclosure. filing and more than 12% of EP applications from European universities requiring the deferral of a disclosure. According to the survey, academic applicants appeared to be more impacted by delayed disclosure than their business counterparts and contribute significantly to grace period requests in other jurisdictions.

The EPO report on the publication of the study is available here. The full report and a summary of key findings are available here.

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