We would like to highlight key differences between Japanese patent practice and that of the United States, Canada, and Australia concerning the exceptions to loss of novelty (also referred to as the “grace period”).
 

1. Declaration or Statement Requirement
• United States, Canada, and Australia
• In these jurisdictions, no formal declaration or official statement is required at the time of filing in order to benefit from the grace period. Applicants can generally rely on the statutory provisions when invoking the grace period after a public disclosure, without needing to submit a separate declaration to the patent office unless the public disclosure is cited as reference during examination.
• Japan
• In Japan, applicants must strictly comply with the requirements set forth under Article 30 of the Japanese Patent Act. Specifically, if you wish to invoke the grace period, you must:
• (i) File a written statement at the same time as your patent application indicating that you seek to rely on the exception to loss of novelty.
• (ii) Submit evidence within 30 days from the date of filing to prove that the conditions for invoking the grace period are satisfied.
• Failure to meet these requirements within the specified timeframe will result in irrevocably losing the ability to rely on the grace period in Japan. This could lead to a rejection by the examiner or invalidation of the patent after it is granted, based on the inventor’s own disclosure prior to filing, which cannot be excluded from prior art.
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2. Scope of Disclosures that can be Covered
• United States, Canada, and Australia
• These jurisdictions generally allow applicants to rely on the grace period for a wide range of disclosures, including disclosures made in their own patent publications issued prior to filing.
• Japan
• In Japan, disclosure by patent publication of any patent office or international organization (e.g., WIPO) is excluded from coverage under the grace period. For example, if your own patent application is published by any Patent Office before you file a later application for the same invention, you cannot invoke the grace period to overcome the publication of your earlier patent application.
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3. Practical Implications
1. Plan your filings carefully. Ensure that you do not inadvertently create a prior art reference that cannot be remedied under Japanese law.
2. Submit the required Japanese grace period documents on time.
• Written Statement: File this together with the application (or at the time of national phase entry for a PCT application).
• Proof of Compliance: Submit any necessary evidence within 30 days of the filing date in Japan.
3. Monitor publication dates of your own patent applications in every jurisdiction, especially if you anticipate additional filings in Japan.
   
   
4. Summary
• Do let the Japanese patent attorney know of any disclosure during the grace period in your jurisdiction.
• Declaration Requirements:
•  - U.S., Canada, Australia: No formal declaration required at the time of filing.
•  - Japan: Mandatory statement at filing + Evidence submission within 30 days.
• Coverage of Patent Publications:
•  - U.S., Canada, Australia: Own patent publications can still be covered by the grace period.
•  - Japan: Own patent publications are not eligible under the grace period exception.

 
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Summary prepared by the International Information Group
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