System for Non-disclosure of Patent Applications

March 11, 2024
The Japan Patent Office

On May 1, 2024, the system for non-disclosure of patent applications (hereinafter referred to as the “System”) will be introduced under the Economic Security Promotion Act (hereinafter referred to as the “Act.”) Under the System, if the description etc., of a patent application includes an invention that, if made known to the public, would be highly likely to create a situation to undermine the security of the nation and its citizens through actions taken from the outside, the patent procedures, such as publication of the application, decision of patent grant and decision of refusal, are suspended by a procedure established as “security designation.”

A review of whether a patent application should be kept non-disclosed (whether a security designation should be made or not) is carried out in two stages: a primary review by the JPO and a security review (a secondary review) by the Cabinet Office. In addition, after the introduction of the System, foreign applications (including international applications pursuant to the Patent Cooperation Treaty, i.e., PCT applications) are prohibited in certain cases. Therefore, the system that seeks a prior confirmation from the Commissioner of the JPO as to whether or not the foreign application is prohibited (Prior Confirmation Regarding Prohibition of Foreign Applications) is newly provided.

In the System, this page focuses on the system of Primary Review by the JPO and the system of Prior Confirmation Regarding Prohibition of Foreign Applications. Please also see the Q&A if necessary. For more information on the System in general, a security review and matters after a security designation is made (e.g., permission to work a patent, measures for proper management, compensation for losses,) please see the Cabinet Office website (link to external site. Japanese only)

Further, a video briefing on the System is also available on IPePlat (link to external site. Japanese only)

＜Reference＞ Flow Chart of the System for Non-disclosure of Patent Applications

1. Primary review (Article 66 of the Act)

In a primary review by the JPO, an application that includes an invention belonging to a specified technology field (*1) in accordance with an International Patent Classification, etc., is selected from among patent applications and the documents pertaining to the patent applications are to send to the Prime Minister (Cabinet Office) for a security review (Article 66(1) of the Act,) The Cabinet Office conducts a security review only on the application sent by the JPO (if the application is not sent to the Cabinet Office, it will not be subject to a security review and will not receive a security designation.)

If the patent applicant has made a request along with the patent application seeking a security review (*2) (paragraph 2 of the relevant Article,) the invention indicated in the request is also subject to a security review in principle.

If, as a result of a primary review, the application has been proceeded with a security review, the Commissioner of the JPO is to notify the applicant (or the representative, if any) by registered mail within three months from the date of filing that the documents have been sent. Although an applicant may learn that the application has not been sent for a security review by not receiving this notification, the applicant may also make a request to be notified that a judgment was made not to send documents (*2) in accordance with Article 66(10) of the Act and receive a notification to the effect.

Please note that a primary review is different from the patent examination procedures under the Patent Act, i.e., the procedures for determining patent requirements such as novelty and inventive step when a request for examination is filed. As the procedures for a primary review and a patent examination under the Patent Act are conducted in parallel, the applicant may file a request for examination before the primary review or the security review is completed.

(*1) Specified technology fields are technical fields that include inventions that could involve a significant risk of detrimental impact to the security of the nation and its citizens if made known to the public and are determined by Cabinet Order in accordance with the International Patent Classification. In addition, the technology fields that are recognized to have a significant impact on industrial development when a security designation is made among the International Patent Classification designated as the specified technology fields, are also narrowed down by aspects other than the technical field through additional requirements. For the concrete scope and contents of the specified technology fields and additional requirements, please see the Cabinet Office website (link to external site. Japanese only)

(*2) Both a request along with the patent application seeking a security review (request under Article 66(2) of the Act) and a request to be notified that a judgment was made not to send documents (request under Article 66(10) of the Act) can be submitted online. For details, please see the e-filing software support website (link to external site. Japanese only) (in preparation.) Where an applicant makes a request under Article 66(10) of the Act, and the documents are judged not to be sent to the Cabinet Office as a result of the primary review, the applicant may receive a notification to the effect online.

2. Prior Confirmation Regarding Prohibition of Foreign Applications (Article 79 of the Act)

Even if an invention where a security designation is conducted is filed in Japan and is not made public, the security designation becomes meaningless if the identical invention is filed and disclosed in foreign countries. Therefore, after the introduction of the System, an invention made in Japan that has not been made public, which may be subject to a security review if the patent application were filed in Japan, must be in principle filed in Japan (first filing) before being filed in the foreign countries (including international applications pursuant to Patent Cooperation Treaty, i.e. a PCT applications) (the main clause of Article 78(1) of the Act.)

An invention that is not subject to Prohibition of Foreign Applications, such as an invention that clearly does not belong to a specified technology field, may still be filed in foreign countries without filing a patent application in Japan. However, when in doubt, the applicant may also use the system of Prior Confirmation Regarding Prohibition of Foreign Applications (a system that allows prior confirmation of whether or not a foreign application is subject to Prohibition of Foreign Application without filing a patent application in Japan) (Article 79(1) of the Act) which is newly established in accordance with the introduction of the System.

With respect to an invention subject to Prohibition of Foreign Applications, however, a foreign application may be filed if a patent application has been filed in Japan (first filing) for which no security designation has been made, but a foreign application is prohibited in principle in Prior Confirmation Regarding Prohibition of Foreign Applications (*1) . Therefore, it should be noted that a broader range of inventions will be exempted from the Prohibition of Foreign Applications for those who file a patent application in Japan and undergo a security review than for those who take advantage of Prior Confirmation Regarding Prohibition of Foreign Applications.

(*1) In Prior Confirmation Regarding Prohibition of Foreign Application, if the Commissioner of the JPO determines that the invention falls under the category of inventions subject to Prohibition of Foreign Applications, the Commissioner of the JPO is seek to, without delay, confirmation from the Prime Minister as to "whether it is obvious that making the invention public will not impact the security of the nation and its citizens due to actions taken from the outside" (Article 79(3) of the Act.) If the Prime Minister determines that "it is obvious that making the invention public will not impact the same," the application is exceptionally exempted from the one of Prohibition of Foreign Applications (the main clause of Article 78(1) of the Act.)

※This English translation is provisional, and the details may be revised after the official English translation of the law is published.

[Updated July 9, 2024]

Contact

Concerning the System in general, a security review and matters after a security designation is made (e.g., permission to work a patent, measures for proper management, compensation for losses,) please contact the Cabinet Office website (link to external site. Japanese only) if necessary. Contact details for procedures Non-disclosure General Affairs Section, Customer Relations Policy Division, Trademark and Customer Relations Department Phone: +81-3-3581-1101 Ext. 2628 Contact details for reviews Non-disclosure Management Section, Administrative Affairs Division, Patent and Design Examination Department Phone: +81-3-3581-1101 Ext. 3126