Even if an invention is one’s own creation, if it has been made available to the public or been publicly known, before filing a patent application, it will not be granted as a patent for being lack of novelty. In the patent laws of Japan and South Korea, provisions known as exception to loss of novelty of an invention after it was published have been established, for cases where an invention was disclosed under specific conditions. This article explains some important points for considerations to the exception to loss of novelty of an invention in Japan, China, and South Korea, when filing a patent application utilizing the Paris Convention and the Patent Cooperation Treaty (PCT).
JAPAN
Patent applicants can apply for provision of exception to loss of novelty by performing the following procedures:
(a) Filing a patent application within one year from the date the invention was publicly disclosed due to actions of the rights holder.
(b) Submitting a document stating the intention to apply for provision of exception to loss of novelty at the time of filing the patent application (This can be omitted by including it in the application form).
(c) Within 30 days from the date of the patent application, submitting a document proving that the requirements for applying the exception to loss of novelty are met.
Special attention should be paid to an application claiming priority filed via the Paris Convention.
By filing an application in Japan within one year from the date of publication of the invention and performing the above-mentioned procedures during the application in Japan, the provisions of Paragraph 2 (Article 30 of the Patent Law) can be applied.
In other words, for example, if you publish the invention in a publication and then file a patent application in the United States within one year from the publication date, after then you file a patent application in Japan with a priority claim based on the U.S. patent application, but at a time after one year from the first publication date, you will not be able to meet the requirements for applying the provision of exception to loss of novelty.
On the other hand, when making an international application under the Patent Cooperation Treaty (PCT) with a priority claim, you need to file an international application within one year from the date of publication of the invention. Additionally, within 30 days of the Japanese national processing standard time (usually within 30 days of transferring to national phase in Japan), you must submit a document stating the intention to apply for the provision of exception to loss of novelty with relevant certificate. Therefore, it can be said that the application for provision of exception to loss of novelty is temporally more lenient when using the PCT compared to using the Paris Convention.
SOUTH KOREA
In South Korea, the rules are more relaxed than those in Japan mentioned above. While a patent application within one year from the date of publication of the invention is still required, you can apply for the provision of exception to loss of novelty later by paying a fee, even if you did not apply for it at the time of filing. Additionally, you can apply for provision of exception to loss of novelty within the available period for amending the specification, or within 3 months from the dispatch date of the notice for granting a patent.
However, when using the priority claim under the Paris Convention, just like in Japan, it is still needed to file a priority claim application in South Korea within one year from the date of publication of the invention.
CHINA
Unlike Japan and South Korea, China has more limited provision of exception to loss of novelty. The provision is as follows:
In cases where the following actions occur within 6 months before the filing date (or the priority date in cases of priority claims), the invention is not considered to have lost novelty:
(1) The invention is first disclosed to the public due to a state of emergency or extraordinary circumstances in the Country for the public interest.
(2) The invention is first exhibited at an international exhibition sponsored or recognized by the Chinese government.
(3) The invention is first presented at a designated academic or technical conference.
(4) The invention is leaked by others without the consent of the applicant.
Therefore, it can be said that in China, in practice it is difficult to apply for the provision of exception to loss of novelty.
In conclusion, the handling of provision of exception to loss of novelty varies in Japan, China, and South Korea. Additionally, different rules applied when utilizing the Paris Convention or the PCT route, makes it essential to exercise caution and be aware of the specific requirements in each jurisdiction.
Tsubame IP Law Firm can assist with the aforementioned procedures for obtaining provision of exception to loss of novelty, and handle other tasks such as national phase procedures for PCT and management from filing through maintaining for patent/trademark.
Please feel free to contact us for any further inquiries.