Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

In many countries, a later application may be rejected over “Secret Prior Art” that is an unpublished earlier application regarded as prior art for the later application.  Although the basic concept of “Secret Prior Art” is common across countries, the details of its requirements are slightly different from country to country.

Here is a comparison of “Secret Prior Art” in IP5 countries, Japan, USA, EU (EPC), China, and Korea, to review similarities and differences of “Secret Prior Art” among the countries.

Required: EPC, Japan, China, Korea

In order to be cited as secret prior art in these countries, an invention disclosed in the description or drawings of the earlier application has to be identical to an invention claimed in the later application.

Literal identicalness of both inventions between the earlier and the later applications is required in EPC.  Namely, only if the claimed invention of the later application is photographically identical to the disclosed invention of the earlier application, the earlier application could constitute “Secret Prior Art” (Photographic Novelty).  Therefore, even when your application is rejected over secret prior art, you can relatively-easy overcome the rejection by amending the claimed invention not to be photographically identical to secret prior art.

In Japan, China, and Korea, literal identicalness of both inventions is NOT necessarily required.  If the claimed invention of the later application is substantially identical to the disclosed invention of the earlier application, the later application could be rejected (Enlarged Novelty).  This means it is a little more difficult to overcome the rejection over “Secret Prior Art” than in the case of EPC.

Not required: USA

In USA, the later application could be rejected over the earlier application, even if the claimed invention of the later application is NOT identical to the disclosed invention of the earlier application.  Where the claimed invention of the later application lacks obviousness over the disclosed invention of the earlier application, the later application could be rejected.  In other words, the later application is subject to assessment on both Novelty and Obviousness in USA, which makes it more difficult to overcome the rejection over secret prior art than in the cases of the other countries.

Yes: Japan, Korea, and USA

In these countries, if both applicants or inventors are the same between the earlier and the later applications, the earlier application is NOT qualified as secret prior art (Non-Self-Collision).  In case where there are a plurality of applicants or inventors, this exception can be applied only if all the applicants or the inventors of both applications are the same.

No: EPC and China

In EPC and China, there is no exception to secret prior art by same applicants/inventors.  Therefore, even if both applicants/inventors are the same between the earlier and the later applications, the later application may be rejected over secret prior art (Self-Collision).

Comparative table of “Secret Prior Art”

Identicalness of both inventions	Required		Not required
	Photographic novelty	Enlarged novelty	Novelty and obviousness
	EPC	JP, KR, CN	USA
	Easy <－－－－－－－－－－－－－－－－－－－> Difficult Difficulty to overcome
Exception by same applicants/inventors	Yes (Non-self-collision)		No (Self-collision)
	JP, KR, USA		EPC, CN

Notes.

Unlike in EPC or China, there is exception to secret prior art by same applicants/inventors in Japan.  Therefore, as far as applicants/inventors are the same between the earlier and the later application, Self-Collision does not occur in Japan.
However, you should draw your attention to the fact that all applicants/inventors are required to be exactly the same between the two applications.  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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