Japanese patent law is based on the first-to-file principle and is mainly given force by the Patent Act. The administrative procedure for obtaining a patent in Japan is similar to that of most other patent systems, and includes the examination of novelty, inventive step and industrial application of the invention.
For the examination of novelty and inventive step, the relevant prior art consists of everything which has been made available to the public anywhere in the world, in any language, by means of written or oral disclosure, provided that the making available to the public occurred prior to the filing date or the patent application. The meaning of “public” includes also one person not bound by an obligation of confidentiality.
The relevant prior art includes also the disclosures made by the inventor itself.
Benefiting from an extended grace period
In general, a patent application for an invention should be filed at the patent office before the invention has been revealed to the public, because otherwise the disclosure to the public is considered as an opposable “prior art”. As such it will be taken into account by the patent office examiner when considering whether the claimed invention meets the requirements of novelty and inventive step. If an invention is available to the public prior the filing date of the patent, the patent office will refuse to grant the corresponding patent based on lack of novelty or inventive step.
However, some countries operate “grace periods” whereby the disclosure is not considered to be prior art to the patent application. In most countries, the grace period only applies to disclosures by the inventors or the person who is entitled to apply for the patent. In all countries, the grace period is limited in time. For example, there is no grace period in France or before the European Patent Office*, but a 12-month grace period exists in Canada, South Korea and United States of America, and a six-month grace period exists in Japan and Russia.
The Japan Patent Office has now decided to extend the grace period in Japan from six to 12 months for patent and utility models. The revised law will become effective on 9 June 2018, and will apply to disclosures made on or after 9 December 2017.
Thus, for all inventions published as of 9 December 2017, the 12-month grace period will apply. For example, if an invention has been made available to the public on 24 January 2018, the disclosure will not be considered if the corresponding patent application is filed on or before 24 January 2019.
The fundamental rule remains: in Europe, a patent application for an invention must always be filed with the patent office before revealing the invention to the public
*The EPO does not provide for a grace period prior to filing a patent application, but provides a kind of protection for an applicant against prior disclosure of an invention caused either by an evident abuse or by a disclosure in a recognised limited list of international exhibitions.
Eric Enderlin is Director of the Chemistry and Life Sciences Department at Novagraaf in France.