1 Year Grace Period in Japan – Exceptions to Loss of Novelty

1 Year Grace Period in Japan – Exceptions to Loss of Novelty

Grace Period in Japan (Exceptions to Loss of Novelty):

Basic Limitations:

  1. File patent application within 1 year (“Grace Period”) from disclosure;
  2. File written statement together with application; and
  3. File certificate within 30 days from filing date.

[Patent Law Art. 30] (Exceptions to Loss of Novelty) (revised in 2018)

(1) In the case of an invention which has fallen under any of the items of Article 29 (1) (Novelty) against the will of the person having the right to obtain a patent, such invention shall be deemed not to have fallen under any of the items of Article 29 (1) for the purpose of the any of the items of Article 29 (1) and Article 29 (2) (Inventive Step) for the invention claimed in a patent application which has been filed by the said person within one year from the date on which the invention first fell under any of said items.

(2) In the case of an invention which has fallen under any of the items of Article 29 (1) as a result of an act of the person having the right to obtain a patent …, the preceding paragraph shall also apply for the purpose of applications of the any of the items of Article 29 (1) and Article 29 (2) for the invention claimed in a patent application which has been filed by said person within one year from the date on which the invention first fell under any of said items.

(3) Any person who desires the application of the proceeding shall submit a written statement … simultaneously with the patent application, and within 30 days of the filing of the patent application … a document proving that the invention has fallen under any of the items of Article 29(1) (“the certificate”) is the invention for which the preceding may be applicable.

(4) …

 

Basic Limitations:

Under the current Japanese patent practice, there is a Grace Period of one year. Even if your invention is disclosed to the public, you may obtain a patent protection in Japan if you:

  1. file a patent application within 1 year from the disclosure;
  2. file a written statement together with the application; and
  3. file a certificate within 30 days from the filing date.

 

Practice Tips:

As to item (i), the “patent application” includes not only a Japanese patent application filed directly with the Japan Patent Office but also a PCT national phase entry into Japan. As you may know, a Japanese patent application (not through the PCT route) may be filed in a foreign language at first followed by a full Japanese translation within 16 months (from the priority date).

As to items (ii) and (iii), in the case of PCT application, the documents can be filed within 30 days from the Japanese national phase entry.

As to item (iii), the certificate should explain the “Facts of Publication” as follows. Please note that we will ask you for some information to find whether your case will be entitled to the exceptions to loss of novelty, and then, we will prepare necessary documents to be filed before the Japan Patent Office at our end. 

(A) in the case of publication through internet:

  1. Date posted on website
  2. Address of website (URL)
  3. Name(s) of the person(s) who published the invention
  4. Contents of the invention published (state in enough detail to specify the subject to be proved)

(B) in the case of publication through sales test:

  1. Test date
  2. Test venue
  3. Name(s) of the person(s) who published the invention
  4. Contents of the invention published (state in enough detail to specify the subject to be proved)

(C) in the case of publication through printed publication (Note: excluding Patent Gazette):

  1. Date of issuance
  2. Printed publication (Name of the publication, volume number, issue number, corresponding page, and publishing office or publisher, etc.)
  3. Name(s) of the person(s) who published the invention
  4. Contents of the invention published (state in enough detail to specify the subject to be proved)

We hope the above information will be of some help to you.  If you have any questions, please do not hesitate to contact us at info@allegropat.com

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