IP5 특허청의 본인공개예외 (Self-Disclosure Exception)제도

Abstract

The U.S.A. in introducing the first-to-file system in 2011, amended the self-disclosure exception (grace period) system, and Japan also in 2011, expanded application scope of the system through 2011 Patent Act amendment. In that respect, the conditions for harmonization of the system has matured. Furthermore, because IP5 Offices are discussing harmonization of patent laws and practices, harmonizaiton through the discussions would also be possible. In that regard, this paper compares self-disclosure exception systems of IP5 countries. Under the U.S. system, which has widest application scope, (1) if an earlier application is filed within 12 months after the disclosure, and then an application is filed under appropriate priority claim, the grace period system may be applied, and (2) the period for the applicant to submit the intent to apply the grace period and relevant evidence is not beforehand prescribed, and if they are required for an examination or a trial, then could be submitted. The self-disclosure exception systems of Europe and China have very narrow application scopes, so it is almost impossible for Korean applicants who disclosed relevant invention,to get patent rights in Europe or China. In that respect, it is necessary to make flexible the European and Chinese systems through harmonization procedure. Self-disclosure exception systems can be roughly divided into three types: most flexible U.S. one, most rigid Europe and China one, middle Korea and Japan one. It is the author’s opinion that if any self-disclosure exception system is being operated, the U.S. type is most beneficial for applicants. In that regard, this paper suggests an Article 30 amendment proposal which has widest application scope. It is hoped that this paper may be utilized for the harmonization discussions among IP5 Offices.