APAA e-Newsletter (Issue No. 40, April 2024)

System for Non-disclosure of Patent Applications in Japan

Toshinori TANNO, UNIUS Patent Attorneys office (Japan)

  1. Introduction

In Japan, the “system for non-disclosure of patent applications” will come into force on May 1, 2024. It is stipulated in the “Act for the Promotion of Ensuring National Security through Integrated Implementation of Economic Measures” (the “Act”) promulgated in May 2022.

Under the new non-disclosure system, publication of patent applications for inventions that could involve a huge risk to the security of the nation and its citizens if made known to the public, will be suspended until such circumstances are resolved and necessary measures to protect the information have been taken.

  1. Outline of the System

The purpose of this system is to prevent technological disclosure and the outflow of information in “specified technology fields” that are important to Japan’s national security. On the other hand, it also opens up the possibility for inventors who have been unable to file patent applications in “specific technical fields” to enjoy rights under Japanese Patent Law.

  • Subject Invention

Under the system, subject inventions are “inventions completed in Japan”. They are limited to “specific technology fields” designated by the International Patent Classification. Only patent applications are eligible while utility model applications are not.

  • Examination

Examination is conducted in two stages: a primary review by the Japan Patent Office (“JPO”) and a security review (secondary review) by the Cabinet Office. Within three months of receiving an application, the JPO will select applications which include inventions in the “specified technical fields” and send the application documents to the Prime Minister (Cabinet Office).

In the security review (secondary review), the Prime Minister (Cabinet Office) will examine the application and decide whether the “invention for security designation” should be granted. When a “request for a security review” (Article 66(2) of the Act) is filed by the patent applicant, the application is sent to the Prime Minister (Cabinet Office) regardless of whether it falls under the “specified technical field”. The applicant may also request for the JPO to confirm whether the invention is subject to the prohibition of foreign applications (Article 79(1) of the Act).

  • Effects of Security Designation

As a result of a security designation being made, the designated patent applicant is subject to the following restrictions:

    • a prohibition on application withdrawal;
    • a permission system for working the invention (Article 73 of the Act);
    • a prohibition in principle of the disclosure of invention details (Article 74 of the Act);
    • an obligation to properly manage invention information (Article 75 of the Act);
    • a requirement of approval for sharing the invention with other businesses (Article 76 of the Act); and
    • a prohibition on filing of applications in foreign countries (first-filing requirement) (Article 78 of the Act).

In addition, there is a loss compensation system (Article 80 of the Act), whereby an applicant who suffers loss due to the designation of maintenance such as non-permission or conditional licensing may receive compensation for “loss that would ordinarily arise”. Penalties are imposed for violations of each prohibition.

  1. Specific Technical Fields

There are 25 “specific technical fields”, 10 of which have additional requirements. They are as follows:

    • Advanced technologies that have a significant impact on security: 9 technology fields These include aircraft, weapons, submarines, etc.
    • Advanced technologies with significant impact on security and additional requirements: 10 technology fields. These include rocket engines, submarines, space vehicles, communication jamming, etc. Additional requirements include defense/military, patent applications by countries, etc., and the Japanese version of the Bayh-Dole system.
    • Technologies that could cause serious damage to people’s lives or economic activities: 6 technology fields. These include nuclear fuel, heavy water, nuclear explosions, ammunition, etc.
  1. Number of Patent Publications in Specific Technical Fields

The table below shows the number of patent publications for the past five years extracted from the JPO’s patent information platform (J-PlatPat). The number of patent applications in specific technical fields is not large. Please note that this is data extracted by the authors and not published by the JPO.