Term for claiming Exception to Lack of Novelty of Invention becomes extended to 1 Year

The term, or grace period, for claiming an exception to lack of novelty of invention will soon be extended from 6 months to 12 months in Japan.

Generally speaking, you cannot obtain a patent due to the loss of novelty of invention in the case where you disclose or explain the inventions to a third party before filing a patent application.

However, you can currently file a patent application claiming an exception to lack of novelty of invention within 6 months of the loss of novelty even in the case where you have made a presentation at a conference or have launched sales of products. According to the Japanese government, the 6 month term will be extended to 12 months in accordance with the agreement of TPP, Trans-Pacific Strategic Economic Partnership.

It is expected that this revision to the Japan Patent Law will make inventions be more easily protected by patent rights while allowing inventors to more easily publish the inventions to the society.

The Japanese government intends to revise the Japan Patent Law by the end of this June.

In addition, the Japanese government intends to introduce patent term extension system into the Japan Patent Law.

Since patent terms expire 20 years after the filing date of a patent application, effective patent terms will be shortened if you take longer to obtain the patent.

However, the Japanese government will revise the Japan Patent Law to allow patent term extension when a patent has not been obtained by either 5 years from the filing date or 3 years from date of requesting substantive examination to obtain a patent, and such a long term for obtaining the patent can be asserted to be unreasonable considering the file history.

This system of patent term extension resembles PTA, or patent term adjustment, in the US.

However, it is expected that this system of patent term extension is not frequently utilized since the Japan Patent Office currently issues the first Official Action within 11 months after the request for substantive examination.

(Reported by Koji WATANABE, Japanese Patent Attorney)