Comparison between JP & US new patent systems
- First (inventor) to file, exception to loss of novelty, and grace period
-
NOBUTAKA YOKOTAKYOWA PATENT AND LAW OFFICE
AIPLA MWI Pre-Meeting, January 22, 2012
TODAY’S TOPICS
• Outline of the revisions in JP and US patent systems
• Novelty provisions• Exception to loss of novelty (JP) vs. Grace
period (US)• Conclusion
Outline of the revisions in JP and US
• Japan (Effective as of April 1, 2012)– No change to novelty provisions (Article 29(1) & 29-2)– Expansion of “Exception to loss of novelty” provision
(Article 30)• USA (Section 3 of AIA; Effective as of March 16,
2013)– Shift from first-to-invent system to first-inventor-to-
file system– Major changes to novelty and “grace period”
provisions (§102)
Outline of the revisions in JP and US
“Novelty” provision- Prior art reference, etc. (Article 29 (1))- Prior application (Article 29-2)
Exception to loss of novelty (Article 30)
“Novelty” provision- Prior art reference, etc. (§102(a)(1))- Prior application (§102(a)(2))
Grace period (§102(b))
COMPROMISE?HOW?
JP US
Novelty provisions
• SUMMARY– Almost no difference can be found between JP
and US for the grounds of loss of novelty based on prior art references, etc. (Article 29(1) (JP) vs. §102(a)(1) (US))
– Almost no difference can be found between JP and US for the grounds of loss of novelty based on prior applications. (Article 29-2 (JP) vs. §102(a)(2) (US))
Novelty provisions
• Comparison between Article 29(1) (JP) and §102(a)(1) (US)
Japan(Article 29(1))
- publicly known in JP or foreign countries
- publicly used in JP or foreign countries
- described in a publication distributed in JP or foreign countries
- available to the public through the Internet
USA(§102(a)(1))
- otherwise available to the public
- in public use- on sale
- patented- described in a
printed publication
- otherwise available to the public
- Definition of prior art -
Novelty provisions
• Comparison between Article 29-2 (JP) and §102(a)(2) (US)
Japan(Article 29-2)
- A patent application published after the filing date of the present application, which was filed before the filing date of the present application
- If priority is claimed, the filing date of a prior application is the earliest priority date.
USA(§102(a)(2) & §102(d))
- A patent application published under section 122(b), which was effectively filed before the effective filing date of the claimed invention
- If priority is claimed, the effective filing date of a § 102(a)(2) reference is the earliest priority date.
- Definition of prior application -
Exception to loss of novelty (JP) vs Grace period (US)
• SUMMARY– Significant differences can still be found between
the “exception to loss of novelty” system (JP) and the new “grace period” system (US). (Article 30 (JP) vs. §102(b)(1)(A) (US))
– In US, third party’s prior art publications or applications during the grace period do not act as prior art. (102(b)(1)(B)&102(b)(2)(B) (US)) In Japan, there are no such exceptional provisions.
Exception to loss of novelty (JP) vs. Grace period (US)
• Comparison between Article 30 (JP) and §102(b)(1)(A) (US)
Japan(Article 30)
- Invention defined in Article 29(1) where the disclosure was made by the inventor.
- Six (6) month - JP application must be filed within six months
- Petition must be filed at the JP filing
- Evidence must be filed within 30 days of the filing date
USA(§102(b)(1)(A))
- Disclosure made by the inventor, etc.
- One (1) year - Applications must be filed within the grace period, but foreign applications can be filed
- Suitable response can be filed when OA is issued
- Personal disclosure -
Example 1
• Inventor’s disclosure
1 year
Disclosure of A by Mr. Xin any place in the world US, JP, … application for A by Mr. X
6 months
Disclosure of A by Mr. Xin any place in the world JP Application for A by Mr. X
US
JP- Petition- Evidence
Exception to loss of novelty (JP) vs. Grace period (US)
• Comparison between Article 30 (JP) and §102(b)(1)(B) & §102(b)(2)(B) (US)
Japan(Article 30)
- No corresponding provision - No corresponding provision
USA(§102(b))
- Disclosure made by a third party during the one-year grace period is eliminated from §102(a)(1)-type prior art (§102(b)(1)(B))
- Application or patent filed by a third party during the one-year grace period is eliminated from §102(a)(2)-type prior art (102(b)(2)(B))
- Third party disclosure & third party application -
Example 2
• Third party disclosure
1 year
Disclosure of A by Mr. Xin any place in the world US, JP, … application for A by Mr. X
6 months
Disclosure of A by Mr. Xin any place in the world JP Application for A by Mr. X
US
JP
Disclosure of A by Mr. Y
Disclosure of A by Mr. Y
×not prior art
○ prior art
Example 3
• Third party application
1 year
Disclosure of A by Mr. X inany place in the world US, JP, … application for A by Mr. X
6 months
Disclosure of A by Mr. X inany place in the world JP Application for A by Mr. X
US
JP
Application for A by Mr. Y
Application for A by Mr. Y
×not prior art
○ prior art
CONCLUSION
• Novelty provision– There is no significant difference between JP
novelty provision (Article 29(1) & 29-2) and US novelty provision (§102(a)).
• Exception of loss of novelty vs. Grace period– Significant differences exist between JP and US for
the exception of inventor’s disclosure.– Significant differences can also be found between
JP and US for an intermediate disclosure or application by a third party.
THANK YOU FOR YOURKIND ATTENTION!!
NOBUTAKA YOKOTAKYOWA PATENT AND LAW OFFICE
TOKYO, JAPAN
