What If I Disclose My Invention Before Applying for Patent Rights?
Patent applications have to be filed before a prior art disclosure in Japan. But what if the disclosure is the inventor’s own? Can he lose novelty against his own invention? The Exception to Lack of Novelty of Invention, as stipulated in Japanese Patent Law (JPL) Article 30, treats inventions published by the inventor or the rights holder as retaining novelty so long as certain requirements are met. This law prevents the accidental loss of patenting rights for inventors who disclose their invention, in print publication or otherwise, before filing patent applications.
How Can I Keep My Rights?
Japan’s novelty grace period cannot be claimed without proper filing. In order not to lose your right to obtain a patent in Japan,
1. You can file for a Japanese disclosure grace period within six months from the time of disclosure when filing in one of two ways:
a. by filing an application directly with the JPO and making the appropriate statement or
b. by filing an International Patent Cooperation Treaty (PCT) application designating Japan.
Note: When filing under (b), the PCT route, the applicant can include a statement stating the circumstances of the disclosure in the appropriate section of the PCT application form.
For the PCT route, you must then enter the Japanese PCT national phase within 30 months from the priority date (If there is no prior application to which the PCT International application claims a priority, the priority date would be the PCT international filling date). In the Japanese PCT national phase application form, you must claim your intention to receive a benefit of Japanese Grace Period under JPL Article 30.
2. File a written “Certificate of Proof of Disclosure” within 30-days from the time of filing the Japanese application or entering the PCT Japan national phase.
There are many who think that filing a priority national application and then filing a Japanese or PCT application at a later date as usual will qualify them for protection. This is not so. Even if claiming a convention priority based on a non-Japanese application, which has been filed within six months from the presentation, you will still need to apply for a Japanese domestic application (see 1(a) above) or a International PCT application designating Japan ( see 1(b) above) within the six-months window from the time of that disclosure.
What is the Grace Period for Post-Disclosure Application in Japan?
The Japanese grace period for a pre-filing disclosure is six months before the filing date. Compared to the U.S.’s one year, this period is short. Most disclosures are covered by the provision, provided that they were made by the inventor or the rights holder before publication of the same invention by another party. As such, the six-month safe harbor now (since 2012) applies to any disclosures made by inventor or the right holder including at study meetings and academic conferences both in and out of Japan regardless of JPO designations, as well as to inventions divulged during TV presentations, or sales activities, among other circumstances.
* The information provided on this website is for informational purposes only and is not intended as legal advice.
** This article is an updated piece based on “Expanded Japanese Grace Period for Non-Japanese Applicants” by Sara Rosengard and Taro Yaguchi.