IP Review Winter 2018/19

14 Other countries Notable countries in addition to Japan and the US which do have a Grace Period include Australia, Brazil, Canada, Mexico, Russia and South Korea. However, the requirements for what disclosures are exempt from destroying the novelty of an invention often vary from country to country, as does the length of the Grace Period. Use of Grace Periods by businesses Grace Periods are not generally used intentionally, even by businesses residing in countries where they are available. In the US, for instance, few businesses use the Grace Period as it prevents patenting in other important markets, such as Europe and China. Further, given the different laws in many countries, it is not always possible to rely on the Grace Period in all those countries which do have one. The main use of Grace Periods results after an invention had been disclosed inadvertently. Research commissioned by the UKIPO in 2014 indicated that Grace Periods are predominantly used by academic institutions, which (not coincidentally) also have the highest level of inadvertent disclosures, probably due to a competing desire for work to be published. However, the implications are not confined to academic institutions. Many businesses collaborate and invest in academic research, which can be compromised when patent protection becomes unavailable in certain markets. Practical advice Grace Period provisions are governed by national (or regional) laws and so just because a Grace Period may be available in one country (or region) does not mean that it is available elsewhere. Even in countries that have seemingly similar provisions, there are many nuances in the law and Grace Periods may only apply in certain circumstances. The fact that Japan has amended the length of its Grace Period to bring it into line with the US is a welcome addition, but until all major countries have basically the same Grace Period provisions, then avoiding the risk of using Grace Periods is the best way to protect valuable inventions. Therefore, it is still good practice to keep confidential any information relating to an invention until a patent application has been filed, and it does not look like this will change in the near future. If an inadvertent disclosure has been made then Grace Periods become a useful option for obtaining protection, but this is likely to be more of a damage limitation exercise. Japan focus Japan has recently revised the section of its Patent Act relating to ‘exceptions to loss of novelty’, i.e. its Grace Period. The conditions for an exception to loss of novelty in Japan remain the same as they were prior to the revision. That is, either the disclosure was a result of an action by the right holder or the disclosure was made against the will of the right holder. Prior to the revision, the Grace Period in Japan was 6 months. However, as of 9 June 2018, the Japanese Grace Period has been extended to 12 months. This brings the provision into closer alignment with that of the US, which also has a 12-month Grace Period. However, there are still a number of important distinctions. Japan vs US Figures 1-3 illustrate some important similarities and differences between the Grace Period provision in the US and the new Japanese provision. Both Japan and the US allow an international PCT application to be filed within the Grace Period to avoid loss of novelty (see Figure 1). However, whereas the US Grace Period also applies to priority applications, the ‘exceptions to loss of novelty’ in Japan only apply to Japanese or PCT filings (see Figure 2). In other words, a US application can effectively be filed up to 2 years after the disclosure, providing a priority application was filed within 12 months of the disclosure. This is not the case in Japan, where the filing of a priority application in another country would not protect the Japanese application from losing novelty. Another important difference relates to disclosures made by third parties. Both the US and Japanese Grace Period provisions only apply to actions of, or as a result of, the inventor (or right holder) themselves. However, the respective laws diverge when considering a subsequent disclosure by a third party. In the US, once a disclosure has been made by the inventor, a later disclosure by a third party of the same subject matter obtained from the inventor will not affect novelty (provided the application is filed within 12 months of the initial disclosure). In Japan, on the other hand, a subsequent disclosure by a third party before the application is filed, even after an initial disclosure by the inventor, could lead to a loss of novelty. This is depicted in Figure 3. In both Japan and the US, the Grace Period applies to PCT filings. This means that novelty is not lost if a PCT application, which later enters the Japanese or US national phases, is filed within the 12 month Grace Period. 12 months 30 months Disclosure File PCT App File JP/US App ...Does a change in Japan’s Grace Period affect anything? A US application filed after the 12-month Grace Period will not lose novelty if priority can be claimed from another application (for instance, a Japanese application) that was filed within the US 12-month Grace Period. 12 months 12 months Disclosure US App In Japan, the Grace Period only applies to Japanese (or PCT) filings. Filing a priority application in another country will not allow use of the Grace Period for a subsequent Japanese application. File Priority App (e.g. JP App) 12 months 12 months Disclosure JP App File Priority App (e.g. US App) 6 months If A and B represent different parties, but relate to the same subject-matter. Disclosure A US App A In the US, party A of an earlier disclosure may still obtain a patent if another party B discloses the same invention before party A filed application A. This would apply even if application A was filed after application B (providing it is within the 12 month Grace Period). This is not the case in Japan, where subsequent disclosures made by third parties before the filing of the application are still novelty destroying, regardless of earlier ‘exempted’ disclosures. 6 months US App B Disclosure B 6 months Disclosure A JP App A 6 months JP App B Disclosure B US JAPAN To find out more contact George Karkera jkarkera@withersrogers.com 15 IP review winter 2018/19