Comparison between JP & US new
patent systems
- First (inventor) to file, exception to
loss of novelty, and grace period NOBUTAKA YOKOTA
KYOWA 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-tofile system
– Major changes to novelty and “grace period”
provisions (§102)
Outline of the revisions in JP and US
JP
US
COMPROMISE?
HOW?
“Novelty” provision
- Prior art reference, etc. (Article 29 (1))
- Prior application (Article 29-2)
“Novelty” provision
- Prior art reference, etc. (§102(a)(1))
- Prior application (§102(a)(2))
Exception to loss of novelty (Article 30)
Grace period (§102(b))
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)
- Definition of prior art Japan
(Article
29(1))
- publicly known - publicly used
in JP or foreign
in JP or foreign
countries
countries
USA
- otherwise
- in public use
available to the - on sale
(§102(
a)(1))
public
- described in a
publication
distributed in
JP or foreign
countries
- available to
the public
through the
Internet
- patented
- described in a
printed
publication
- otherwise
available to the
public
Novelty provisions
• Comparison between Article 29-2 (JP) and
§102(a)(2) (US)
- Definition of prior application 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
USA
- A patent application published
under section 122(b), which
(§102(a)(2) &
was effectively filed before the
§102(d))
effective filing date of the
claimed invention
- If priority is claimed, the filing
date of a prior application is
the earliest priority date.
- If priority is claimed, the
effective filing date of a §
102(a)(2) reference is the
earliest priority date.
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)
- Personal disclosure Japan
(Article
30)
- Invention
- Six (6) month
defined in
Article 29(1)
where the
disclosure was
made by the
inventor.
USA
- Disclosure
made by the
(§102(
b)(1)(A))
inventor, etc.
- One (1) year
- 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
- Applications
must be filed
within the
grace period,
but foreign
applications
can be filed
- Suitable
response can
be filed when
OA is issued
Example 1
• Inventor’s disclosure
Disclosure of A by Mr. X
in any place in the world
US, JP, … application for A by Mr. X
US
1 year
Disclosure of A by Mr. X
in any place in the world JP Application for A by Mr. X
JP
6 months
- 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)
- Third party disclosure & third party application 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))
Example 2
• Third party disclosure
Disclosure of A by Mr. X
in any place in the world
US, JP, … application for A by Mr. X
US
1 year
×not prior art
Disclosure of A by Mr. Y
Disclosure of A by Mr. X
in any place in the world JP Application for A by Mr. X
JP
6 months
○prior art
Disclosure of A by Mr. Y
Example 3
• Third party application
Disclosure of A by Mr. X in
any place in the world
US, JP, … application for A by Mr. X
US
1 year
×not prior art
Application for A by Mr. Y
Disclosure of A by Mr. X in
JP Application for A by Mr. X
any place in the world
JP
6 months
○prior art
Application for A by Mr. Y
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 YOUR
KIND ATTENTION!!
NOBUTAKA YOKOTA
KYOWA PATENT AND LAW OFFICE
TOKYO, JAPAN