IP Review Winter 2018/19

Does a change in Japan’s Grace Period affect anything? The Japanese Patent Office has recently extended the Grace Period in Japan from 6 months to 12 months. This is a welcome change for innovators but will it have an impact on global patent filing strategies, and how does it compare to the provisions of the US Patent and Trademark Office (USPTO), the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO)? 13 What is a Grace Period? A Grace Period is a period of time after an invention has been publicly disclosed in which a patent application for the invention can still be filed without its novelty being lost. Patent systems are designed to reward innovation with the intention of stimulating technological progress. As a result, one of the most fundamental requirements of a patent is that it must relate to an invention that is new. Although this principle is generally accepted worldwide, what is considered ‘new’ for the purposes of obtaining a patent varies from country to country. Patents are jurisdictional and therefore subject to national (or regional) laws. At the EPO (and the UKIPO), novelty is assessed against the ‘state of the art’, which includes everything made available to the public before the patent application is filed. Importantly, the state of the art includes disclosures of inventions made by the inventors themselves. As a consequence, most EPO member states do not have a meaningful Grace Period – any disclosure made before a patent application is filed can count against the novelty of the invention, except in a few restricted circumstances (for instance, if the disclosure is made in breach of confidence). In other patent jurisdictions, there is a more liberal attitude towards novelty after the disclosure of an invention. In fact, Grace Period provisions are available in about 25 countries worldwide. In the US, for example, a patent application can be filed up to 12 months after a disclosure by the inventor. However, the countries in which a Grace Period is available are generally, although not exclusively, of less commercial importance. Patents 12 IP review winter 2018/19