The UKIPO website has published an interesting US and UK study on the subject of grace periods.

The report notes that around 30 countries in the world have a grace period (defined in the report as “A period of time, before a patent application for an invention is filed, in which the invention could be disclosed without its novelty being lost”) but that EPC states have no meaningful grace period to speak of.

A handy table summarising available grace periods around the world can be found in Annex 3 of the following report which is referenced in the UKIPO publication.

The objective of the IPO publication was to get an understanding of the different systems in the UK and US and to try and ascertain any positive or negative implications to businesses. In particular a number of different stakeholders (academics, businesses, patent firms) were interviewed as part of the research to identify reliance on grace periods and perceptions of grace periods.

The main findings of the research were:

• unsurprisingly the greatest reliance on grace periods was amongst academics for whom the report suggests that patenting activities are of secondary importance to publications
• businesses and IP firms in the UK are broadly against the introduction of grace periods as they feel it will complicate the system and hamper innovation
• in the US however grace periods are seen to be fair to academics and small business and to promote collaboration. A lack of global harmonisation however means multinationals in the US do not rely on grace periods
• IP firms in both the US and UK encourage use of the patent system and rarely advise relying on grace periods to protect inventions (grace periods of course can be useful where there has been an accidental or inadvertent disclosure)
• The grace period provisions within the America Invents Act (AIA) are seen as ambiguous and in need of clarification/amendment

If grace periods are to be introduced into other territories it is recognised that they will need to be harmonised and clear. In particular the following areas were flagged as needing attention:

• What constitutes a disclosure? A conference paper, written document, oral disclosure? etc.
• What exactly is being protected? How closely does the final patent application need to be matched to the graced disclosure
• Who makes the disclosure? Inventor or collaborators?
• What kind of audit trail is needed?

The UKIPO report suggests that there is a general recognition that trying to introduce harmonised grace periods would be a long road and the time taken to arrive at the unitary patent package is highlighted as an example of the difficulties in getting sufficient agreement to get such a large programme off the ground. If grace periods are to be introduced more widely there is a feeling that the period should be 12 months.

Mark Richardson 21 May 2015