Exceptions to Lack of Novelty of Invention | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

Exceptions to Lack of Novelty of Invention | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

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FAQs

Japanese Patent FAQs

Exceptions to Lack of Novelty of Invention

Q.We disclosed an invention prior to filing a patent application. Is there a grace period in Japan?

A.

There is a one-year grace period for an invention that has lost a novelty due to an act either by or against the will of the person having the right to obtain the patent (excluding an invention that lost novelty by publication of the invention in the Patent Gazette, Utility Model Gazette, Design Gazette, Trademark Gazette or foreign official gazettes equivalent thereto). The application must be filed within one year from the date of disclosure to take advantage of the grace period pursuant to Section 30(1) of Japanese Patent Law (exceptions to lack of novelty of invention). It is necessary to submit a certificate/document proving that the disclosure was made within one of the exceptions. Such a certificate/document and its Japanese translation must be submitted within 30 days from the filing of the application (with the exception of disclosure against the will of the right holder(s)).

If a PCT application is going to be filed, you should file a PCT application designating Japan within one year from the date of disclosure. Also, the applicant should indicate that exceptions to lack of novelty for the invention should be applied at the time of filing the PCT application. Then, the applicant can rely upon the one-year grace period based on the PCT application. Within 30 days from the date of entry into the Japanese national phase, the applicant must submit documents to prove that an exception to lack of novelty is applicable.

For further information, please contact us and let us know the circumstances and details.

Q.When filing a PCT application during the international stage, we did not indicate exceptions to lack of novelty for the invention. Are exceptions to lack of novelty of invention still available in Japan?

A.

If a PCT application has been filed with the International Bureau within one year from the date of disclosure and if a request for exceptions to lack of novelty is filed with the JPO at the time of entering into the Japanese national phase, exceptions to lack of novelty of invention are available in Japan.

Please let us know in your letter instructing us to enter the Japanese national phase that you wish to take advantage of exceptions to lack of novelty for the invention and that you did not indicate such at the time of filing the PCT application.

Q.Does a Declaration as to Non-Prejudicial Disclosures or Exceptions to Lack of Novelty have to be filed with a PCT application in order to obtain the benefit of the one-year grace period in Japan?

A.

No. Even if you do not indicate exceptions to lack of novelty for the invention (Box No.VIII(v) in the Request) at the time of filing the PCT application, the exceptions to lack of novelty of invention are applicable in Japan. In that case, first, a PCT application must have been filed within one year from the date of disclosure.

However, we recommend that exceptions to lack of novelty for the invention be indicated at the time of filing the PCT application. If you do so, there will be no need to file a request for exceptions to lack of novelty of invention with the JPO (a written statement of reasons for reinstatement must still be filed, however).

Q.Does it make a difference if the PCT application is filed at the IB or at the USPTO in order to obtain the benefit of the one-year grace period in Japan?

A.

Filing a PCT application at the International Bureau (IB) or at the USPTO does not make a difference. The JPO follows the information from the IB.