INSIGHT: Japan Expands Grace Period Protection for Inventors

In the proverbial quest to publish or perish, the details of a ground-breaking academic discovery could be rushed to publication before a patent application is filed. The unfortunate outcome is that such pre-filing disclosure will constitute an absolute novelty-destroying bar against subsequently filed patent application.

Japan’s patent law has addressed this pre-filing publication problem with a six-month grace period against the inventor’s own novelty-destroying publication or disclosure.

Under Section 30(2) of Japan Patent Law, any intentional acts, disclosures and exhibitions by the applicant (“the person having the right to obtain a patent”) may qualify for the exception to lack of novelty if the applicant timely files a grace period application within six months from the date of the novelty-destroying disclosure.

Japan also has a grace period for any acts, disclosures, and exhibitions made by a third party against the will of the person having the right to obtain a patent, who may qualify for the exception to lack of novelty under Section 30(1) of Japan Patent Law.

In a pro-patentee development, the six month grace periods under Section 30(1) and Section 30(2) has been extended to 12 months. This new extended grace period came into legal effect on June 9, 2018. Under the new law, in order for the patent applicant to enjoy the benefit of the new extended 12 month grace period,

(1) the filing date should be on or after June 9, 2018, AND

(2) the novelty-destroying event should be on or after Dec 9, 2017.

The 12 month grace period has also been extended to registered designs and utility model applications as of June 9, 2018, and the provisions are applicable mutatis mutandis. However, this amendment does not apply to inventions/designs that were disclosed on or before December 8, 2017. Inventions/designs disclosed on or before December 8, 2017 have a six-month grace period.

The following figure illustrates the ambit of new law on the extended grace period:

Japan Patent Office

Disclosures against the Inventor’s Will – Section 30(1)

A wide range of third parties’ acts are likely to be considered as “acts against the will” and these include acts caused by the applicant’s error or fault are considered to be within the scope of the grace period protection. More specifically, when determining whether an act was done “against the will” of the person having the right to obtain a patent, it will suffice to prove the fact that the person had no intention of permitting his/her invention to be publicly known (or the existence of a thought in his/her mind that it should not be made public).

A disclosure made due to “carelessness” is also considered to be such a kind of act. As long as it is clear that the right holder intended to control the secret, how well the secret was guarded does not matter (Tokyo High Court decision, 28 October 1981; Tokyo District Court decision 1999 (wa) 11289). It does not matter how (due to what kind of acts) the secret became public either.

Specific examples include a disclosure made in violation of a secrecy obligation or an NDA. According to a court precedent, a third party assumes a secrecy obligation “in a situation where, based on the conventional wisdom or business practice, the third party is implicitly required and expected to keep secrets even if there is not an explicit instruction or request to do so from the inventor” (Tokyo High Court decision 1999 (Gyo ke) 368).

An example of disclosures made due to the involvement of criminal acts is an act that was done by a third party using the results of theft or, e.g., corporate espionage.

Inventor’s Own Disclosures – Section 30(2)

Japan’s 12 month grace period under Section 30(2) is applicable against the inventor’s and/or applicant’s own novelty-destroying disclosures. Japan’s 12-month grace period cannot be used to eliminate or disqualify a third party’s novelty-destroying publications and/or disclosures that constitute as prior art against the inventor’s patent application.

In practice such novelty-destroying disclosures by the inventor include:

A presentation to potential investors for the purpose of funding or investment;

An oral presentation at a study session of an R&D consortium;

Marketing, advertising;

Disclosure at a meeting, seminar or lecture;

Disclosure on television, radio, internet and any other media or format.

The grace period application under Section 30(2) can be filed in ONLY one of the two following ways, (1) filing an International PCT patent application designating Japan OR (2) filing a patent application directly with the Japanese Patent Office. The applicant CANNOT file a priority U.S. application within the 12 month grace period, then file a PCT application designating Japan within 12 months of the U.S. filing date.

Filing an International PCT patent application designating Japan within 12 months from the novelty-destroying disclosure date, rather than a direct filing with the Japan Patent Office, would be the preferable route to file a grace period application considering that the applicant has the flexibility of using the thirty month national phase time period in which to enter into the Japanese National Phase.

At the future Japanese National Phase entry, the grace period claim must be claimed at the time of entering the JP national phase and it cannot be made later.

Within thirty days from the date of entering into the Japanese National Phase at the JPO, a copy of the public disclosure of the invention (e.g. a copy of the publication of the abstract of the invention - this copy need not be certified) must be filed. Such a copy of the presentation must include the name of the publication, the date of issuance of the publication (printing date), the name(s) of the person(s) who presented the abstract, the persons who are the inventors; and the abstract which indicates the claimed invention. If the aforesaid person(s) who presented the abstract are not the same as the inventors of the subject patent application, the reason thereof is required.

In order to ensure that the grace period can be properly claimed at the time of the JP national phase, it is probably prudent to obtain all the relevant certifications of the novelty-destroying disclosures sooner rather than later.

Conclusion

In summary, the grace period provisions under the new Japanese patent legislation will provide patent applicants with a great level of comfort, particularly against inadvertent disclosure or use of an invention as well as disclosures or use that are against the will of patent applicants. The extended grace period is a helpful development that will ensure that inventors’ patent rights that are lost by a pre-filing novelty-destroying disclosure can be salvaged by effectively using the extended 12-month grace period. Nevertheless it is always the best practice to ensure that patent applicants prepare and file any patent application prior to any public disclosure or commercial use of the invention.

John Tessensohn is a Director of SHUSAKU·YAMAMOTO. His specialized areas of practice include worldwide procurement, defense, enforcement and licensing of patents & trademarks for electronics, software and healthcare clients, multi-jurisdictional patent litigation, opposition and invalidation, arbitration, trademarks, licensing and technology transfer, trade secrets, anti-counterfeiting and anti-piracy, customs and criminal seizures, and unfair competition.