Implication of Patent Non-Disclosure System to Overseas Applicants

April 2024
Practice Area

A non-disclosure system for patent applications will be introduced in Japan on May 1, 2024.  This article outlines the new system and its impacts on filing activities of overseas applicants.

The Outline of the New System

System for non-disclosure of selected patent applications is stipulated in Chapter V of the Economic Security Promotion Act (hereinafter, referred to as “the Act”), which was enacted in May 2022.  The Act was established with the aim of ensuring national security.

Under the new system, if the description etc. of a patent application includes an invention that, if made known to the public, would be highly likely to result in a significant risk of detrimental impact to the security of the nation and its citizens, the patent procedures, such as publication of the application, decision of patent and decision of rejection, are suspended by the procedure called “security designation.”

A review of whether a patent application should be kept non-disclosed (whether a security designation should be conducted or not) is carried out in two stages: primary review of a first review by the Japan Patent Office (JPO) and security review of a secondary review by the Cabinet Office.  In addition, after the introduction of the system, foreign applications (including international applications, that is to say Patent Cooperation Treaty (PCT) applications) are prohibited for cases which may be subject to a security review if the patent applications were filed in Japan.  Therefore, the system also provides an applicant with an opportunity to ask the JPO Commissioner to confirm as to whether or not the foreign application, which the applicant intends to file, is subject to prohibition of foreign application (first-filing requirement) prior to the filing of a foreign application.

Even during the suspension period of procedures such as publication, decision of patent or decision of rejection, other procedures such as procedural amendments, request for examination and issuance of office action will not be suspended.  Therefore, the patent procedures can be conducted as usual by the JPO even after security review was implemented.

Effects on Overseas Applicants in Patent Applications in Japan

Even applicants outside of Japan should pay attention to the system if their research facilities are located in Japan or if they conduct research jointly with Japanese companies or universities, and they create the inventions for military purpose.

Japanese patent application that has been entered into Japan from an international application based on PCT

Article 66 (5) of the Act stipulates that an international patent application deemed as a patent application based on Article 184 (3) of the Patent Law will not be applied the provision of  Paragraph (1) or Paragraph (2).  Consequently, such application will not be subject to the primary review as well as security review.

Japanese patent application claiming priority under the Paris Convention based on the application (hereinafter, called as “basic application”) firstly filed in a foreign country

As there is no stipulation for such application, the application could be subject to primary review.

In case where the applicant is a foreign national and the basic application has been filed in the foreign country, it may not violate the first-filing requirement in Japan.  Also, it might be said that the security designation will lose its point if the basic application has been already published or will become to be published.  However, in the primary review, it is difficult for the JPO to judge where the invention is created or the like.  Therefore, it is likely that the JPO will send all applications which the JPO considers falling under the specific technical field to the Cabinet Office, not depending on the status of publication.  However, at the stage of the security review, the applicant can report the followings to the Cabinet Office: i) the fact the basic application has been already published or will become to be published and ii) therefore it might be said that the security designation will lose its point to the Cabinet Office.  Those of i) and ii) will be under consideration of the review during the security review.  It is said that the secondary review will be completed within ten months of the filing of the application.