Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

Many countries have adopted “a grace period” which allows for public disclosure on an invention without affecting the validity of a subsequent patent application. However, since each country has its own law on the grace period, there exist various types of the grace periods.

Here is the comparison of grace periods in Japan, USA, Europe (EPC), China, Korea, and Taiwan.

1. Time length of grace period

One-year grace period ------ USA, Korea

       The US patent law provides the grace period of one-year preceding the date of US patent application before USPTO.

       The grace period in Korea was expanded from six-month to one-year preceding the date of Korean patent application as Korea concluded the Free Trade Agreement (FTA) with USA.  This new grace period has become effective since March 15, 2012. 

Six-month grace period ------ Japan, EPC, China, Taiwan

       The grace periods in Japan, EPC, China, and Taiwan are set as six-month preceding the date of a patent application in these countries.  

2. Circumstances surrounding disclosure where grace period is allowed

No limitation to kinds of disclosure ------ Japan, USA, Korea

       The applicability of the grace period in Japan will be broadened from April 1, 2012.  This new applicability of grace period will cover any disclosures by applicant including selling.

       The current US Patent Law allows grace period for some limited disclosures such as selling only in USA.  However, as to US patent application filed on or after March 16, 2013, the new Law which allows grace period for any disclosures by an inventor including selling in a country except USA will be applied.

       The revised Korean Patent Law has been effective since March 15, 2012 with the conclusion of the FTA with USA.  This new Law allows grace period for any disclosures by applicant including selling. 

Limitation to particular kinds of disclosure ------ EPC, China, Taiwan

       The applicability of the grace period in EPC is extremely limited so that no grace period is substantially available.
       The applicability of the grace period in China and Taiwan is limited to the circumstances such as a disclosure by publication at a particular exhibition.  Therefore, the grace periods in China and Taiwan are not applicable to a disclosure by selling by an applicant. 

Comparison Table of Grace Periods

(*1) applied to an application filed on or after March 16, 2013
(*2) applied to an application filed on or after April 1, 2012
(*3) excluding a disclosure by publication of an unexamined patent application or a patent gazette

Practice advice:

              Please do not rely on the grace period if the invention is important enough to file in Japan because an application claiming priority has to be filed within six months from the disclosure in and out of Japan (even if the application has been applied to the grace period in a foreign county).  Also, there is possibility that an application be objected by a third party’s prior disclosure. 

              If you need more information in this matter, please contact us at http://en.aigipat.com/contact/index.html.

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