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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
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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
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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)
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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
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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))
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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 -
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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 -
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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.
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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 -
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Example 1 Inventor’s disclosure 1 year Disclosure of A by Mr. X in any place in the world US, JP, … application for A by Mr. X 6 months Disclosure of A by Mr. X in any place in the world JP Application for A by Mr. X US JP -Petition -Evidence
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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 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 -
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Example 2 Third party disclosure 1 year Disclosure of A by Mr. X in any place in the world US, JP, … application for A by Mr. X 6 months Disclosure of A by Mr. X in any place in the world JP Application for A by Mr. X US JP Disclosure of A by Mr. Y × not prior art ○ prior art
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Example 3 Third party application 1 year Disclosure of A by Mr. X in any place in the world US, JP, … application for A by Mr. X 6 months Disclosure of A by Mr. X in any place in the world JP Application for A by Mr. X US JP Application for A by Mr. Y × not prior art ○ prior art
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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.
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THANK YOU FOR YOUR KIND ATTENTION!! NOBUTAKA YOKOTA KYOWA PATENT AND LAW OFFICE TOKYO, JAPAN
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