Month: February 2022

The European Patent Office (EPO) is consulting users about the novelty requirement under the European Patent Convention (EPC) and the lack of a so-called “grace period” in the European patent system, in what appears to be the start of the EPO considering whether to introduce a “grace period” into the EPC.

Scope of the EPO’s survey

The survey, which will explore the impact of the strict novelty requirement on the filing and business practices of EPO applicants, will be complemented by a consultation of user and stakeholder associations. The survey will focus on users’ experiences of the current novelty requirement under the EPC.

The survey participants have been selected from a random sample of EPO applicants selected from the latest published patent documents. Participants will be asked about their organisations’ patenting activities in Europe and how they currently deal with the EPC’s strict novelty requirement when filing patent applications at the EPO. The EPO will also present participants with a number of different grace period options and ask for their thoughts on each.

The EPO’s survey aims to understand:

– How different categories of EPO applicants manage the strict novelty requirement
– How this requirement impacts disclosure and patent commercialisation strategies
– What effect different grace period scenarios might have

What is a “grace period”?

One of the most important features of the EPC is the strict novelty requirement which means that an invention must not have been publicly disclosed prior to their earliest filing date. Under some patent systems, most notably the US, this strict novelty requirement is partly mitigated to allow inventors to make disclosures of their inventions during a “grace period” of, for example, six or twelve months prior to filing their patent application. During such a “grace period” an invention can be disclosed to the public without losing its novelty, so that the invention remains patentable.

The resulting feedback will be published by the EPO in the spring of 2022.

Managing your intellectual property (IP) can seem like a daunting task at times. However, it can be easier than you think. We’ve put together 5 simple things you can do to make IP portfolio management easier and more efficient.

1. Request client access to your attorneys’ case management system – this contains details of all of your applications and granted patents, trade marks etc, plus upcoming deadlines, all in one place (and it will be regularly updated)
2. Ask your attorney to set up a regular (monthly/quarterly) meeting to discuss outstanding actions and upcoming deadlines – it’s a really efficient way to instruct your attorney.
3. Form a patent board to review new invention disclosures and make decisions on whether to file patent applications – to be most effective you need to have the key decision makers on the patent board (usually CTO, CFO, IP manager/responsible) and meet regularly (monthly or quarterly, depending on how many inventions are being reported)
4. Write a patent filing strategy detailing where (and whether) you will file patent applications for different areas of technology – next time you have a decision to make about where to file a patent application all you need to do is refer to your strategy. Ask your patent attorney to help you do this, looking back at what you have done before and what your business strategy is for the next 3-5 years
5. Provide an Invention Disclosure Form for your engineers to complete to report details of new inventions to the patent board – your patent attorney can provide you with one that includes guidance on what they should include, so that the patent board has all the information it needs to make a decision and your attorney has all the information they need to draft a patent application.

If you’re looking for further advice on how to manage your IP portfolio or if you would like a template Invention Disclosure Form that you can use, email us hello@two-ip.com we will be happy to help.