"The Bill for the Act of Partial Revision of the Unfair Competition Prevention Act, Etc." approved by the Japanese Cabinet on February 27, 2018, has passed and established as of May 23, 2018. This Act was promulgated on May 30, 2018 and the Article 30 of the revised Patent Act came into force on June 9, 2018.

 Under the Japanese patent system, an invention disclosed prior to the date of filing a patent application shall not, in general, be patentable. However, it may be severe for inventors to assume that any invention is not patentable even though a patent application therefor is filed after disclosing said invention by presentation of a thesis to any publication, etc., and it can also be said that it is not consistent with the purpose of the Patent Act proclaiming the contribution to industrial development. Therefore, the exceptional provision for loss of novelty of an invention (Article 30 of the Patent Act), stipulating that when a patent application is filed after disclosing its invention under specific circumstances, the novelty of the invention is not lost by said previous disclosure, has been established under the Patent Act.

 In accordance with this revision, the grace period of the exceptional provision for loss of novelty relevant to Article 30 of the Patent Act is extended from six months to one year.

 The revision of Article 30 of the Patent Act (hereinafter referred to as "New Article 30") is intended to extend the grace period of the exceptional provision for loss of novelty of an invention from six months to one year and not intended to make any change in other respects. Also, since the Patent Act is applied mutatis mutandis to the Utility Model Act, the grace period of exceptional provision for loss of novelty of a devise is extended from six months to one year.

 The detailed explanation is made below regarding the case to which the New Article 30 is applied.

 In general, a patent application of which the filing date is on or after June 9, 2018 is subject to the New Article 30.

 The filing date is treated in the following manners depending on the type of applications.

 (1) In case of an ordinary application: an ordinary filing date

 (2) In case of a division application, a conversion application and a patent application based on a utility model registration: a filing date of an original application

 (3) In case of an application claiming internal priority: in general, the filing date of the basic application for which the priority is claimed, provided, however, that the filing date of the application claiming internal priority with respect to any invention not described in the specification, claims or drawings initially attached to the request form of the basic application

 (4) In case of an application claiming priority under the Paris Convention: a filing date of the application claiming priority

 (5) In case of an international patent application claiming internal priority: in general, a filing date of the basic application for which the priority is claimed, provided, however, that the filing date of the international application with respect to any invention not described in the specification, claims or drawings initially attached to the request form of the basic application

 (6) In case of an international patent application claiming priority under the Paris Convention and an international patent application without claiming priority under the Paris Convention: a filing date of the international application

 Further, regarding patent applications of which filing date is on or before June 8, 2018, the grace period of the exceptional provision for loss of novelty shall be six months since Article 30 of the Patent Act prior to the revision is applied.

 However, please note that the New Article 30 is not applied to any invention disclosed by December 8, 2017 so that said invention cannot be subject to the exceptional provision for loss of novelty even though the filing date is on or after June 9, 2018.

 For example, if the filing date is June 9, 2018, the grace period of the exceptional provision for loss of novelty shall be six months from December 9, 2017 to June 9, 2018. Further, if the filing date is from June 10, 2018 to December 8, 2018, the grace period of the exceptional provision for loss of novelty shall be six plus X months from December 9, 2017 to said filing date. In addition, if the filing date is December 9, 2018, the grace period of the exceptional provision for loss of novelty shall be one year from December 9, 2017 to December 9, 2018.

(Summary)

 The grace period of the exceptional provision for loss of novelty shall be one year as to patent applications filed or to be filed on or after June 9, 2018.

 Particularly, in case of a patent application claiming priority under the Paris Convention initially filed in overseas and then transferred to Japan, the filing date is decided as follows:

 (1) the filing date in Japan as to the application claiming priority under the Paris Convention, and

 (2) the filing date of the international application as to the international patent application claiming priority under the Paris Convention.

 However, the New Article 30 is not applied to any invention disclosed by December 8, 2017 so that such inventions cannot be subject to the exceptional provision for loss of novelty even though the filing date is on or after June 9, 2018.

 Further, it should be noted that the Article 30 of the Patent Act is only an exceptional provision to the principle that the invention disclosed prior to the date of filing the patent application is not patentable. Even though an applicant is eligible to receive this exceptional provision with the invention disclosed prior to the date of filing the application, the applicant cannot receive a patent when a third party filed a patent application for or disclosed the same invention as said disclosed invention in the period between the disclosure and filing of said invention by the applicant. Therefore, there is no change in the importance of filing applications as soon as possible although the grace period of the exceptional provision for loss of novelty is extended to one year under this revision.

 Please do not hesitate to contact us if you have any question about the above description or if you would like to know specific procedures, etc. for applying the provision of Article 30 of the Patent Act.

(References)

- "Operational Guidelines for Applicants to Seek the Application of Exceptions to Loss of Novelty of Invention, corresponding to the Patent Act Article 30 revised in 2018" (PDF: 732KB)

- "Q&A Collection on the Exceptional Provision for Loss of Novelty of Invention corresponding to the Patent Act revised in 2018" (PDF: 667KB)

- "Section 5 Exceptions to Loss of Novelty of Invention of Chapter 2, Part III of the Examination Guidelines corresponding to Patent Act Article 30" (PDF: 150KB)

https://warp.da.ndl.go.jp/info:ndljp/pid/12649553/www.jpo.go.jp/system/laws/rule/guideline/patent/hatumei_reigai_encho.html