1. BACKGROUND:

The Japanese Patent Law defines:

Article 29 (1):

          A person that invents an invention with industrial applicability may obtain a patent for that invention, unless the invention is as follows:

          (i) an invention that is public knowledge within Japan or in a foreign country prior to the filing of the patent application; …

That is, a patent application is typically rejected if the invention lacks novelty. Meanwhile, the Japanese Patent Law also defines:

Article 30 (1):

          In applying Article 29, paragraph (1) and (2) to an invention in a patent application … the intention is deemed not to fall under any of those items.

          (2) The preceding paragraph also applies with respect to the of application of Article 29, paragraphs (1) and (2) to invention in a patent application that person with the right to obtain a patent files within one year after the date on which the invention, through that person’s actions, comes to fall under one of the items of Article 29, paragraph (1) (excluding an invention which has come to fall under any of the items of Article 29, paragraph (1) due to being contained in a gazette relating to an invention, utility model, design or trademark).

That is, even if an invention is publicly disclosed as a result of the right holder’s (such as the applicant’s or the inventor’s) actions, the PCT national phase application in Japan may be eligible for exceptions to lack of invention (hereinafter referred to as the “grace period”).

Please note that this article provides an explanation for a typical case for a foreign client.

2. REQUIREMENTS:

To take advantage of the grace period, the Japan Patent Office (hereinafter referred to as the “JPO”) has established strict guidelines.

(1) PCT Deadline

Firstly, a PCT application must be filed within 12 months after the public disclosure of the invention, regardless of whether the PCT application claims a priority.

(2) Documentation

(i) written statement confirming that the applicant is seeking a grace period; and

(ii) certificate attesting to the fact that the invention meets the requirements.

Regarding item (i), if the applicant has submitted the “Declaration as to Non-Prejudicial Disclosures or Exceptions to Lack of Novelty” (under PCT Rule 4.17(v), 26ter. 1), designating Japan during the international stage, then it is not necessary to file the written statement with the JPO.

Regarding item (ii), please note that the submission of the document is a requirement that cannot be omitted. The specific information required in the certificate depends on the type of the public disclosure, but it is typically required to include the following information:

• date of disclosure;
• place of publication;
• description of the disclosed invention; and
• information on the inventor, applicant, etc.

Rest assured that we will request that you provide us with the relevant materials, such as an exhibition brochure, and we will prepare the statements regarding the required information at our end.

(3) Deadline

The deadline to submit the required documents before the JPO varies depending on the individual case. Please note that the following explanation is directed to a typical case for a foreign client.

As you may be aware, a Japanese national phase application must be filed within 30 months from the priority date (or, if the priority is not claimed, from the international filing date). In this regard, the deadline of 30 months allows for the submission of a petition for entry along with a full Japanese translation. Meanwhile, it is also possible to file only the petition for entry initially, and then prepare and file the full Japanese translation at a later date, within two months from entry into the national phase.

Please be advised that the documentation explained above regarding item (2) must be filed within 30 days from the deadline for filing a Japanese translation.

3. PRACTICE TIP:

To ensure the highest quality of translation, we generally utilize the 2-month period for the preparation phase. Meanwhile, in order to take advantage of the grace, it is usually necessary to invest time in collecting evidence and preparing the documentation previously mentioned regarding 2-(2).

Therefore, if you would like us to apply for the grace period, we believe it would be prudent to prepare and file the necessary documents at the following times:

• Submit a petition for entry into a Japanese national phase closer to the 30-month deadline;
• Submit a full Japanese translation within the 2-month period; and
• Submit the necessary documentation to take advantage of the grace period for the exceptions to lack of novelty within 30 days.

We believe the above comments will be clear to you.  Should you have any further questions, please do not hesitate to contact us.