Q5 An Application after the Publication of an Article in a Periodical or a Presentation at an Academic Conference

Please explain the details of the correlation between academic conferences or publications of theses/dissertations and a patent application.

What is crucial in filing a patent application is the novelty of the invention. If all or a part of the details of the invention is published without due care before the filing of a patent application (by way of delivering a presentation at an academic conference, submission of a thesis, making a website available to the public, delivering a presentation at a place where unspecified people who do not execute a non-disclosure agreement can come in and out, or otherwise), then the novelty of the invention of the inventor would be lost due to the inventor’s own presentation or publication, thereby causing a situation where the inventor is unable to obtain a patent. However, considering that it is a legitimate mindset for a researcher to publish his/her research results as soon as possible to assert priority, it would not be appropriate from the viewpoint of industrial progress to deem that all of such presentations and publications would constitute public knowledge and the novelty would be lost. It can also be considered as too harsh on the inventor.

Accordingly, Article 30 of the Patent Act of Japan provides an exception to the lack of novelty of an invention, whereby, even if an invention has lost its novelty, it will be deemed that the novelty has not been lost under certain conditions and procedures. The general understanding that a patent application can be filed within one (1) year after the presentation at an academic conference is based on the provision of Article 30 of the Patent Act.

The conditions for application of the exception to the lack of novelty of an invention are as follows:

a. The presentation is made by the person himself/herself who holds the right to patent at the time of the presentation (in cases where the inventor delivers the presentation, it is delivered before the right to patent is assigned to the applicant).

b. A patent application is filed within one (1) year from the publication (in cases where a conference abstract is published before an academic conference, the date of issue specified in the colophon thereof will be the date of the publication).

c. Together with the filing of a patent application, a document is submitted specifying the application of the exception to the lack of novelty of an invention, and a document certifying to the fulfillment of the conditions for the application thereof is submitted within thirty (30) days from the filing of the patent application (if multiple presentations were made, then each presentation requires the applicant to undergo the exception procedures).

However, in applying the exception to the lack of novelty of an invention, the matters enumerated below should be noted:

Ⅰ. This exceptional measure is effective only in Japan. If you intend to obtain a patent in a foreign country without a similar provision, then the invention will be unpatentable as “an invention which has lost its novelty,” except for some countries.

Ⅱ. If another researcher independently creates an improvement invention based on the original inventor’s idea presented at the academic conference, and such researcher files an application or delivers a presentation earlier than the original inventor, then there is a possibility that the original inventor’s filing of a patent application will not be allowed.

To avoid the situations described above, the filing of a patent application is recommended to be completed before the presentation at an academic conference as much as possible. Also, if you make a submission of an invention to the University that is about to be presented at an academic conference or has already been presented, then please indicate it upon such submission.

Please refer to procedures for the application of Article 30 of the Patent Act of Japan, which are posted on the website of the Japan Patent Office.

How are presentations delivered at a presentation meeting for graduation dissertations or master’s dissertations or a research meeting held on the University treated?

Internal presentations or research meetings that take place in the University are also treated as publications just like academic conference presentations if the same can be heard by unspecified participants without any covenant of confidentiality. Accordingly, please choose one of the following two methods when a research presentation is to be delivered at a meeting to present a graduation or master’s dissertation before the filing of a patent application.

(1) Avoid a “publication” for the presentation meeting:
The examination meeting or the like for an undergraduate or master’s dissertation can be organized in a manner that would not be deemed as a “publication” in cooperation with the graduate school or major. For an invention to be treated as not constituting “public knowledge,” please note the following items:

• Avoid calling the meeting a “public hearing” or the like and specify the scope of eligible participants in the mention of the opening notice for the meeting (e.g., current students, faculty members, or research scholars of XX Course of YY Graduate School).
• Communicate to the participants of the examination meeting that the contents of the presentation are confidential, and all participants must sign a written covenant to maintain the confidentiality.
• Avoid disclosing any relevant materials.

It is possible for graduation dissertations or the like and materials relevant thereto to not be treated as “public knowledge” if they are administered separately from general books, documents and the like until they are published in libraries or other institutions, and a written covenant of confidentiality is signed by each person who sees them each time, and during that period, it is possible to file an ordinary patent application.

If a collection of dissertations, materials relevant thereto is disclosed to the public at libraries or other institutions, it would be treated as “public knowledge” from the time of such disclosure to the public. The date of such publication must be clearly recorded. Otherwise, it should be noted that, the relevant materials will be deemed to have been disclosed to the public on the date of the research presentation meeting or the like described in the said relevant materials, and the date on which such relevant materials became “public knowledge” will be retrospectively applied.

(2) File an application after the publication applying Article 30 of the Patent Act of Japan. In this case, upon making the submission of the invention to the University, please be sure to specify the fact of the publication and the earliest date thereof.

Will Article 30 of the Patent Act of Japan apply to an article that appeared in a newspaper after an interview by the press or a press release made by the University?

Pursuant to the amendment of the Patent Act of Japan in 2011 (which took effect on April 1, 2012), Article 30 thereof shall apply anew to an invention published in meetings, seminars or the like (i.e., academic conferences or the like not designated by the Commissioner of the Japan Patent Office), as well as inventions or the like published via television, radio or the like that are not printed publications, to which Article 30 of the Patent Act of Japan did not apply previously.

I wrote the agenda to be distributed prior to the academic conference without stating the part related to the invention that I planned to file an application for, then I filed an application before the date of the presentation, and then I delivered the presentation at the academic conference. The agenda didn’t make it public knowledge before the presentation, did it?

In cases where the details of the application are not contained in the agenda for the presentation at an academic conference, the publication of such agenda would not cause the invention to be “public knowledge.”

I did not present the structure of a compound, which is an invention, using the name “compound A,” however, I presented the physical properties and features thereof in detail. If the structure is unknown, the compound didn’t become public knowledge, did it?

In cases where only the features were published without presenting the structure of a compound or its specific name, the invention is considered not to have become public knowledge since the compound had no correlation with the features.

Can I assume that materials submitted in an application for a scientific research fund or various grants are kept confidential?

A written application is not something made “for the purpose of presenting it publicly” or to be used at the recipient institution for the purpose of a public presentation, so the “state of confidentiality” thereof is considered maintained. However, sufficient caution should be taken, because if the research is adopted, then there is a possibility that the summary part thereof may be published on a website or the like.

Is there any point that should be noted in relation to presentations at academic conferences and dissertation presentations after a patent application is filed?

An application claiming domestic priority or an overseas patent application can be filed within one (1) year after the filing of a patent application, adding data or an improvement invention. But, in cases where contents of a presentation at an academic conference or dissertation presentation which is made after the filing of the basic application pertains to an improvement invention that is to be added thereafter, it should be noted that there is a possibility that the novelty or inventive step of the additional portion of the invention may be negated due to such presentation. Upon filing the original application, please consult with the person in charge concerning if there may be an addition in the future and balancing such with the presentation.