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JPO Held Tegernsee Symposium on Patent System Harmonization

The Japan Patent Office (JPO), in cooperation with the International Association for the Protection of Intellectual Property (AIPPI) and the International Federation of Intellectual Property Attorneys (FICPI), held a Tegernsee Symposium, an international symposium on patent system harmonization, on July 10. At the Symposium, the speakers from IP offices, user groups, universities, and companies were invited from various countries and regions, to make presentations and actively discuss key issues involved with the grace period. By these informative presentations and discussions, both the private and public sectors were able to share a common understanding, in that discussions should be further advanced toward harmonizing the patent system, especially the grace period.

1. Background

The “Tegernsee Group,*” which consists of the Trilateral Offices, namely, the intellectual property (IP) offices of Japan, the U.S., and Europe; and the IP Offices of major European countries such as the United Kingdom, Germany, France and Denmark, has been advancing discussions on international harmonization of patent systems. At the meeting held in April 2014, the Tegernsee Group agreed to release the Final Consolidated Report on the Tegernsee User Consultations. The Final Consolidated Report contains a joint factual summary analyzing the results of user consultations that each of the offices held on four key issues involved with harmonization, namely, the grace period,** treatment of conflicting applications,*** 18-month publication,**** and prior user rights,***** which are the prime areas in which large differences are found among the offices.

Based on this, the JPO held an international symposium on patent system harmonization, entitled the “Tegernsee Symposium,” with a focus on the grace period that is a main concern of users, in cooperation with AIPPI and FICPI, in Tokyo on July 10. The Symposium was designed to discuss the results of the Final Consolidated Report with users, as well as to gain further feedback from users.

*1:
Tegernsee Group: The first meeting on patent-system harmonization was held at Tegernsee in the suburb of Munich, Germany, in July 2011. Ever since then, the group of offices participating in these meetings has been called the "Tegernsee Group.”
**2:
Grace Period: This refers to a certain period of time before the dates on which applications are actually filed for patents. During the grace period, the novelty of inventions is not considered to be lost, even if information on these inventions has been disclosed before applicants file patent applications for them. One of the major discussion points about the grace period is the mode of disclosures in which the grace period can be applied, such as whether the grace period should be limited to international exhibitions. (In Japan, there is a regulation on “exceptions to the rules dealing with loss of novelty,” correspondingly.)
***3:
Treatment of Conflicting Applications: When later-filed applications are examined, there are cases that they are rejected on the grounds that inventions claimed in earlier-filed, unpublished applications are deemed to be publicly known prior art, although they are in fact secret prior art. Such earlier-filed applications are called “conflicting applications.” (In Japan, provisions of Article 29bis of the Patent Act, which are the rules dealing with “the expanded effect of earlier-filed applications,” apply to conflicting applications.) One of the discussion points is to determine what extent the effect of such secret prior art being claimed in earlier-filed, unpublished applications should be admitted, and therefore become the basis for rejecting later-filed applications.
****4:
18-month Publication: In many countries, all applications are to be published at 18 months from the dates on which they were filed. However, under the U.S. system, certain applicants based on their own will can opt out of having their applications published at 18-months, on the condition that they have not and will not file foreign family applications.
*****5:
Prior User Rights: This refers to the rights of third parties to either continue using inventions, if they actually began using or began preparations to use them before patent applications were filed for the same inventions. Even if patents are not granted for inventions, those who have been actually conducting business activities using these inventions before patent applications were filed for the same inventions, are able to continue using them at no cost. However, the U.S. sets certain requirements for applying prior user rights.

2.Outline of the Results of the Tegernsee Symposium

The JPO invited experts to the Symposium from IP offices, user groups, universities, and companies from various countries and regions to give presentations and hold a panel discussion, mainly on key issues involved with international harmonization of the patent system. (For further details on the program of the Symposium, please refer to the attached.) The main results are as follows:

(1) Keynote Speeches

In the first session, two keynote speeches were delivered. The first was by Professor Dr. Dres. h. c. Joseph Straus, Emeritus Scientific Member of the Max Planck Institute for Innovation and Competition. The second was delivered by Professor Toshiya Watanabe of the Policy Alternatives Research Institute of the University of Tokyo. In the session, some cases were introduced in which inventors hesitated to disclose their inventions due to the lack of the grace period. Also, concerns are indicated that the lack of the grace period may delay the wider use and further development of new and valuable knowledge and technologies, and that it may have a negative impact on collaboration between industry and academia.

(2) Report from the Tegernsee Group Offices

In the second session, the JPO, the European Patent Office (EPO), and the United States Patent and Trademark Office (USPTO) introduced the details of the Final Consolidated Report. In outlining the results of the user consultations, which were used and analyzed to make the Final Consolidated Report, the JPO’s presentation focused on the issues of the grace period. By conducting a detailed analysis of the aggregated data, including cross tabulations, the JPO clarified the trends in users by affiliation****** and by technical area, in which they are engaged, about ideas and policies on the grace period. The JPO also explained that, based on notable trends seen in each type of user, more precise understanding of these various trends in user attitudes on the grace period is would be helpful, in order to further advance discussions toward patent system harmonization.

******6:
For example, the percentages resulting from disclosure due to error and disclosure at exhibitions and business meetings for SMEs are higher than those for other user types.

(3) User Opinions on the Grace Period

The third session focused on user opinions on the grace period. Representatives of international user groups, universities/research institutes, and SMEs made presentations explaining mainly the practices and uses of the grace period and what the grace period system should be like in the future. According to user opinions, most users expressed their support for having the grace period. Also, many users expressed their necessity for using the grace period based on their respective standpoints. For example, universities and research institutions tend to put a higher priority on making presentations on research papers at academic conferences than on filing patent applications. Also, some SMEs felt the necessity to acquire patents for their inventions only after they had disclosed their inventions and gained positive customer feedback at trade exhibitions or business meetings.

(4) Panel Discussion on the Grace Period

In the fourth session, a panel discussion on the grace period was held, with a focus on the issues of the grace period system, in which differences are found among the offices *******.

  • Duration of the grace period

    Most of the panelists were in favor of twelve months. Also, some panelists indicated that they are not particularly interested in the duration of the grace period, if it is internationally harmonized. Nobody said that there shouldn’t be a grace period.

  • Mode of disclosures in which the grace period can be applied

    Most panelists agreed that mode of disclosures covered by the grace period should not be limited to international exhibitions, and that all types of disclosures should be eligible for the grace period, based on discretion.

  • Mandatory declarations

    In terms of declaration requirements for invoking the grace period, opinions were divided among the panelists. Some panelists claimed that applicants should not be forced to declare that they are invoking the grace period. One of the reasons is that, if applicants cannot identify the dates when their inventions were disclosed, they ultimately will become ineligible to invoke the grace period. On the other hand, other panelists indicated that applicants should be required to follow specified procedures, including making declarations so that legal stability for patent rights could be improved.

  • Necessity to harmonize grace period systems

    All panelists agreed that the grace period systems should be harmonized. Some panelists indicated a problem caused by the differences in the grace period systems in the various countries and regions. For example, although applicants were able to file patent applications by making use of the grace period in some countries, they gave up acquiring patent rights in other countries because there were no grace periods or there were differences in the scope and eligibility of the grace periods.

*******7:
Issues with the grace period that were discussed during the panel discussion at the symposium (Comparison among Japan, U.S., and Europe)
Issues Japan U.S. Europe
Duration of grace period 6 months 12 months 6 months
Mode of disclosures eligible for grace period All disclosures
(other than patent gazettes)
All disclosures Specified international exhibitions
Declarations or prescribed procedures Required Not required Required

3.Future Initiatives

At the Symposium, thanks to the kind cooperation of the attendees, the JPO received feedback from users about issues with patent system harmonization, such as the necessity of the grace period and international harmonization. Based on this, the JPO is committed to further promote discussions toward international harmonization of patent systems, including the grace period. Consequently, by continually working to further advance global business activities of companies as well as research and development activities of universities based on patent-system harmonization, the JPO intends to make it easier for users in Japan to acquire IP rights smoothly at lower cost.

Release Date

July 11, 2014

Division in Charge

International Policy Division, Policy Planning and Coordination Department Japan Patent Office

Ministry of Economy, Trade and Industry
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