If a patent application (latter application) is filed with the claimed invention being identical to the description in the specification of a former patent application, the application may be rejected when the former patent application is laid open to the public after the filing of the latter patent application. Understanding secret prior art in Japanese and global patent law is important.
If, at the time of filing the latter application, the former application has not yet been laid open to the public, when it is laid open to the public after the filing of the application, it may become the basis for refusal of the latter application. This issue has been discussed by WIPO’s SCP (Standing Committee on Patents) under the title of “Secret Prior Art.
This“Secret Prior Art” doctrine is considered to exist based on “the equity between the interests of the former application and the latter application”, but questions are raised as in the following situation.
Consider when a patent application of a certain invention claimed is filed, and related inventions of the claimed invention are also included in the patent specification as other embodiments of the invention. Then, the same applicant would like to obtain a patent for the invention which is described as another embodiment, as a separate application. Namely, in this context, the applicants and/or inventors of the former application and the latter application are the same.
In Japan, it is stipulated under Article 29-2 of the Patent law, and in Japanese patent examination practice, the concept of the article is referred to as “the enlarged prior application” or “the quasi-public knowledge.”
A feature of the Japanese Patent Law on this point is that there is an exemption in the case of the same applicant/inventor. Therefore, if both applications are filed by the same applicant and/or the same inventor, the latter application will not be refused under the provisions of Article 29-2 of the Patent Law.
At Kimura & Partners, we focus on supporting domestic and foreign companies, especially SMEs, register and defend their IP in what we call the IP battleground. As to this article… it’s important to understand the concept of “Secret Prior Art” and its different treatment in the PTOs of different countries.
Please note that, in my experience, I have not experienced any reasons for refusal under Article 29-2. In my 30 years of practical experience, I have only received two notices of refusal in total.
In the EPC, unlike in Japan. it is stipulated under Article 54(3), and there is no exemption on “the same applicant and the same inventor”. Therefore, if the applicant deals with such a situation in Europe, based on the same idea as Japan, it will surely be rejected. This is called a “self-collision” in EPC practice.
Twenty years ago, I was involved in a patent application for a major Japanese automobile company. At that time, I heard from someone in their intellectual property department that most applications for related and improvement inventions in the EPC were rejected due to this self-collision.
Therefore, despite the company’s fame and global market power, we must conclude that their application strategy was carried out without taking sufficient measures to avoid self-collision at that time.
In order to avoid self-collision, note that the Article does not apply to an application with the same priority date as the former application. So if possible, it can be resolved by making the filing date the same as the former application. Also, care should be taken not to describe the related invention at the forefront of the specification, in detail, as much as possible. As a Japanese patent applicant at the JPO, it is necessary to pay attention to this point.
In SIPO (China’s Patent Office), China treats, and operates in the same way as the EPC. Thus, the “self-collision” situation occurs despite there being no clear related provision under the Patent Act.
US patent law also provides for Secret Prior Art (Section 102(a)(2)) – before the revision, it was stipulated under Section 102(e). Since the Article is not applied to a latter application, if the inventors are the same as a former application, basically there is no situation of “self-collision”.
Note, however, if there are multiple inventors in the latter application, they must be completely the same as former application .
Applicants from countries outside of Japan need to pay attention to the fact that it is not only the cause of loss of novelty (anticipation), but also the basis for determining the un-obviousness of an invention, which are different from some other countries , and Japan.
Understanding secret prior art in Japanese and global patent law is important. Relevance and treatment varies by county.
