Ron C. Harris, Jr. AIPLA, The Harris Firm Koji Hirayama JPAA, Heiwa International Patent

1. Round Table Session – Patent Harmonization Grace Period & Conflicting Applications Closed Meeting between AIPLA and JPAA April 9, 2013 Ron C. Harris, Jr. AIPLA, The Harris Firm Koji Hirayama JPAA, Heiwa International Patent

2. Recent Major Harmonization Movements JP broadened the scope of “grace period” effective April 1, 2012. US passed AIA September 16, 2011. “FTI” to “FITF” effective March 16, 2013 • Tegernsee group (EPO, US, JP, UK, DE, FR, DK) commenced discussion about harmonization in July 2011. • Grace period • Publication of applications (18-month publication) • Treatment of conflicting applications • Prior user rights

3. Discussion of Patent Harmonization Today’s Topics: • Grace period • Treatment of conflicting applications • Our practices under AIA and JP laws • and more… Exchanging frank views is welcomed!

4. Grace Period & Non-Prejudicial Disclosures (1): Pure “Grace Period” Definition (À LA Pre-AIA 102(b)): “A period of time before the filing date during which disclosure of an invention would be deemed as not destroying novelty of the invention” Policy Reasons: - academic collaboration - pro-competitive safety net (e.g., small business) - strategic purpose (facilitates testing, etc.) - abuse (derivation) Not intended to diminish predictability and legal certainty Expected Beneficiaries and Public: universities; small entities and NPEs such as individual inventors; SMEs (including start-up companies); research organizations

5. Grace Period & Non-Prejudicial Disclosures (2): Differences Between US and JP?

6. Grace Period & Non-Prejudicial Disclosures (3): Differences Between US and JP? “SM”: Subject Matter

7. Grace Period & Non-Prejudicial Disclosures (4): Differences Between US and JP?

8. Grace Period & Non-Prejudicial Disclosures (5): Differences Between US and JP?

9. Grace Period & Non-Prejudicial Disclosures (6): Draft of SPLT (Substantive Patent Law Treaty) • Article 9 • Information Not Affecting Patentability (Grace Period) • [General Principle] An item of prior art with respect to a claimed invention shall not affect the patentability of that claimed invention, in so far as that item was included in the prior art on a date during the [12][six] months preceding the priority date of the claimed invention, • by the inventor, • by an Office and the item of prior art was contained • in another application filed by the inventor [and should not have been made available to the public by the Office], or • in an application filed without the knowledge or consent of the inventor by a third party which obtained the information contained in the item of prior art directly or indirectly from the inventor, • by a third party which obtained the information contained in the item of prior art directly or indirectly from the inventor.

10. Grace Period & Non-Prejudicial Disclosures (7): Draft of SPLT (Substantive Patent Law Treaty) • Article 9 • Information Not Affecting Patentability (Grace Period) • [General Principle] • Invoking Grace Period • [Alternative A] • The effects of paragraph (1) may be invoked at any time. • [Alternative B] • A Contracting Party may require the applicant to submit a declaration invoking the effect of paragraph (1) [as prescribed in the Regulations].

11. Treatment of Conflicting Applications (1): Definition: “How to deal with secret prior art, i.e., applications containing relevant subject matter which were filed prior to the filing or priority date of the application being examined, although published later” Policy reasons: - prevent double patenting - administer first-to-file principles among simultaneous independent inventors - authenticate inventorship

12. Treatment of Conflicting Applications (2): Differences between US and JP?

13. Treatment of Conflicting Applications (3): Differences between US and JP?

14. Case Study (1): 6 months X Publication “A” Application “A” 6 months Y Publication “B” Application “B” Who may obtain a patent if the same invention (“A”=“B”) is disclosed by the inventors (X and Y) who independently invented it?

15. Case Study (1) in JP: 6 months X JP Art. 30 Appl. “A” Pub. “A” [not prior art] [prior art] JP Art. 29(1)3 JP Art. 29(1)3 [prior art] 6 months Y JP Art. 30 Appl. “B” Pub. “B” [not prior art] In JP, neither X nor Y may obtain a patent. 15

16. Case Study (1) in US: 6 months X US Sec. 102(b)(1)(A) Pub. “A” Appl. “A” [not prior art] ? US Sec. 102(a)(1) [not prior art] US Sec. 102(b)(1)(B) [prior art] 6 months Y US Sec. 102(b)(1)(A) Appl. “B” Pub. “B” [not prior art] In US, X may theoretically obtain a patent (but per USPTO rules only if Y’s published disclosure presented no “trivial” changes). Practically speaking, neither X nor Y may obtain a patent.

17. Case Study (2): 4 months X Appl. Pub. “A” Pub. “A” Appl. “A” 6 months Y Appl. Pub. “B” Appl. “B” Pub. “B” Who may obtain a patent if the same invention (“A”=“B”) is disclosed by the inventors (X and Y) who independently invented it? 17

18. Case Study (2) in JP: 4months X Art. 30 Appl. Pub. “A” Pub. “A” Appl. “A” [not prior art] Art. 29(1)3 Art. 29(1)3 [prior art] 6month [prior art] Y JP Art. 29bis Art. 30 [prior art] Appl. Pub. “B” Appl. “B” Pub. “B” [not prior art] In JP, neither X nor Y may obtain a patent. 18

19. Case Study (2) in US: 4months X AIA 102(b)(1)(A) Appl. Pub. “A” Appl. “A” Pub. “A” [not prior art] AIA 102(b)(2)(B) AIA 102(a)(1) Sec. 102(b)(1)(B) ? 6month ? [likely prior art] [prior art] [likely prior art] Y Appl. Pub. “B” AIA 102(b)(1)(A) Appl. “B” Pub. “B” [not prior art] In US, Y may theoretically obtain a patent (but per USPTO rules only if X’s published disclosure AND application presented no “trivial” changes). Practically speaking, neither X nor Y may obtain a patent. 19

20. What are your thoughts? Please exchange frank views!

21. Thank you for your participation! HEIWA INTERNATIONALPATENT 21