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PATENT – Important Amendments To The Patent Act of Japan Comes To Effect On 1 April 2012

In Malaysia, according to Section 14(1) and (2) of the Malaysian Patents Act, an invention is considered new if it is not anticipated by prior art, which means it should not be disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the patent application claiming the invention.

However, there is an exception to lack to novelty of invention, whereby under Section 14(3) of the Patents Act, a disclosure made shall be disregarded if such disclosure occurred within one year (12 months) preceding the date of the patent application and if such disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title or if such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title.

Now referring to filing a patent in Japan, under the current Japan Patent Act, there is a similar exception to lack to novelty of invention to the Malaysia’s Patents Act. But the duration is only for six months prior to the patent application date and the said exception only applies if the said disclosure was of predetermined conduct such as conduct of test or conduct of presenting the invention in a printed publication. It does not apply to the inventions publicly disclosed by the conduct of sales by the applicant.

With the recent Amendment Act Article 30, Paragraph 2, this exception to lack of novelty will also be applicable to inventions which has been publicly disclosed by any conduct including sales and announcement on television of the applicant (except for those published in the domestic/foreign patent publications or the like).

In summary, if your invention was sold in Malaysia within six months prior to the patent application in Malaysia, previously it would not be possible to file a similar patent in Japan claiming priority date from the Malaysian patent application due to the lack of novelty. However, based on the new amendment to the Japan Patent Act, it is now possible.

The grace period is not consistent among most countries. Taiwan, South Korea, Russia has a six months grace period while the United States, Malaysia, Australia, Canada has 12 months grace period. Countries that observe absolute novelty are China and countries governed by the European Patent Convention. For novelty requirements of other countries, please contact us for further information.