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NOBUTAKA YOKOTA KYOWA PATENT AND LAW OFFICE AIPLA MWI Pre-Meeting, January 22, 2012

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

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NOBUTAKA YOKOTA KYOWA PATENT AND LAW OFFICE AIPLA MWI Pre-Meeting, January 22, 2012

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  1. 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

  2. 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

  3. 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)

  4. 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) 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))

  5. 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))

  6. Novelty provisions • Comparison between Article 29(1) (JP) and §102(a)(1) (US) - Definition of prior art -

  7. Novelty provisions • Comparison between Article 29-2 (JP) and §102(a)(2) (US) - Definition of prior application -

  8. 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.

  9. Exception to loss of novelty (JP) vs. Grace period (US) • Comparison between Article 30 (JP) and §102(b)(1)(A) (US) - Personal disclosure -

  10. 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 • Petition • Evidence 6 months

  11. 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 -

  12. 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 × Disclosure of A by Mr. Y not prior art Disclosure of A by Mr. X in any place in the world JP Application for A by Mr. X JP 6 months ○ Disclosure of A by Mr. Y prior art

  13. 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 × Application for A by Mr. Y not prior art Disclosure of A by Mr. X in any place in the world JP Application for A by Mr. X JP 6 months ○ Application for A by Mr. Y prior art

  14. 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.

  15. THANK YOU FOR YOURKIND ATTENTION!! NOBUTAKA YOKOTA KYOWA PATENT AND LAW OFFICE TOKYO, JAPAN

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