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Patent

Overview of “Secret Prior Art” in Japan

November 16, 2012
“Secret Prior Art” is an earlier application that is regarded as prior art for a later application even though the earlier application was not published at the timing of filing of the later application.
Japanese Patent Law stipulates “Secret Prior Art” in Article 29bis as follows.

Requirements for “Secret Prior Art” in Japan

Patent or utility model application
A patent or utility model application filed in Japan can be cited as secret prior art against a later application.  An application filed in a country other than Japan or a PCT application not designating Japan does not meet the requirements for secret prior art.

Publication
The earlier application has to be published in Publication of Patent Application (including International Patent Publication designating Japan) or Patent Gazette in Japan after the later application was filed.  Thus, if the earlier application is withdrawn prior to being published, the earlier application would not be cited as secret prior art.
In case where the earlier application has already published at the timing of filing of the later application, it is a matter of “Prior Art (Novelty)” not “Secret Prior Art”.

Identicalness
In order to be cited as secret prior art, an invention disclosed in the description or drawings originally attached to the earlier application has to be identical to a claimed invention of the later application.
However, according to the Examination Guideline in Japan, complete identicalness of both inventions is NOT necessarily required.  If both inventions are substantially the same, the earlier application could be cited as secret prior art against the later application.
If a claimed invention of the earlier application is identical to a claimed invention of the later application, it is a matter of “Double Patenting” not “Secret Prior Art“.

Different applicant or inventor
If both applicants are the same between the earlier application and the later application, the earlier application would not be qualified as secret prior art against the later application.  In case where there are a plurality of applicants, this exception would be applied only if all the applicants of both applications are the same.
If all inventors of both applications are the same, the earlier application also would not be cited as secret prior art against the later application.

Requirements for Secret Prior Art

Type of application

Earlier application has to be Patent or Utility model application

Publication

Earlier application has to be published after later application

Identicalness of invention

Invention in earlier application has to be exactly or substantially identical to invention in later application

Different applicant or inventor

Applicants or Inventors of both applications have to be different



Where claiming priority involved

If claiming priority is involved, an application is treated as if it has been filed on the priority date in considering secret prior art.

Now, assuming that Application_1 was filed on November 1 and Application_2 was filed on December 1, and Application_2 has claimed the priority date of October 1.

In this case, Application_1 would not be cited as secret prior art against Application _2 because Application_2 is treated as if it has been filed on October 1 (i.e. the priority date) which is earlier than the filing date of Application_1 (November 1).

On the contrary, assuming that Application_1 was filed on December 1 and Application_2 was filed on November 1, and Application_1 has claimed the priority date of October 1.

In this case, since Application_1 is treated as if it has been filed on October 1 (i.e. the priority date) which is earlier than the filing date of Application_2 (November 1), Application_1 would have the qualification as secret prior art against Application_2.


Notes.

As prescribed above, If all applicants or inventors of both applications are the same, Article 29bis (secret prior art) would not be applicable to them.  Therefore, as far as applicants or inventors are the same, the issue of “Self-Collision” in EP applications does not happen in Japan.

However, you should draw your attention to the fact that all applicants or inventors are required to be exactly the same between the two applications.  Therefore, in case where you filed the earlier application as joint application, but you filed the later application by yourself, your later application would be rejected by your earlier application as secret prior art.


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

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