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Comparison of JP & US New Patent Systems: First-to-File, Exception, and Grace Period

Explore the revisions in Japan and the USA patent systems, including novelty provisions, exception to loss of novelty in Japan versus grace period in the USA. Discover the differences in the first-to-file system, major changes in novelty and grace period provisions, and more.

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Comparison of JP & US New Patent Systems: First-to-File, Exception, and Grace Period

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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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