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Home > Laws and Regulations > Other Information > Patents and Utility models > Procedures for Seeking the Application of Exceptions to Lack of Novelty of Invention, Corresponding to the Patent Act Article 30

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Procedures for Seeking the Application of Exceptions to Lack of Novelty of Invention, Corresponding to the Patent Act Article 30

October 3, 2011
Japan Patent Office

1. Purpose of the Exceptions to Lack of Novelty of Invention (Purpose of the Patent Act Article 30)

In the Japanese patent system, a patent shall not be granted for inventions which have been published prior to the filing of a patent application, in principle. However, strict application of this principle to all cases could bear an unfavorable result. Moreover, it could be said that such practice does not match the purpose of the Patent Act, which is to contribute to the development of the industry.

Given this fact, Exceptions to Lack of Novelty of Invention is stipulated in the Patent Act Article 30 which treat an invention as one that does not lack novelty due to a previous publication, if the invention has been published under specific conditions and a patent application has been filed within 6 months from the publication date.

2. Procedures for Seeking the Application of Exceptions to Lack of Novelty of Invention

To support applicants in easily taking required procedures, Japan Patent Office (JPO) has provided “Operational Guidelines for Applicants to Seek the Application of Exceptions to Lack of Novelty of Invention (Japanese only)” which was published in October 2006 and revised in March 2010 through JPO website.

The scope of Exceptions to Lack of Novelty of Invention was expanded due to the revision to the Patent Act Article 30 in 2011. In response, JPO newly prepared and published, “Operational Guidelines for Applicants to Seek the Application of Exceptions to Lack of Novelty of Invention, Corresponding to the Patent Act Article 30 Revised in 2011.” These Operational Guidelines apply to patent applications to which Patent Act Article 30 revised in 2011 applies.

When an applicant seeks the application of the Patent Act Article 30, the applicant should check which article applies to his/her patent application, the Article 30 after revision in 2011 or the Article 30 before revision in 2011.

(1)In case of a patent application which is subject to the Patent Act Article 30 revised in 2011

(In principle, a patent application whose application date is after April 1, 2004 is subject to the Patent Act Article 30 revised in 2011. For more detailed information, please refer to page iii in the “Operational Guidelines for Applicants to Seek the Application of Exceptions to Lack of Novelty of Invention, Corresponding to the Patent Act Article 30 Revised in 2011.”)

When an applicant intends to use the Exceptions to Lack of Novelty of Invention for his/her patent application which is subject to the Patent Act Article 30 revised in 2011, please refer to the following Operational Guidelines and follow proper procedures.

Operational Guidelines for Applicants to Seek the Application of Exceptions to Lack of Novelty of Invention, Corresponding to the Patent Act Article 30 Revised in 2011 (PDF:440KB) (Provisional English Version)

(2)In case of a patent application which is subject to the Patent Act Article 30 before revised in 2011

(In principle, a patent application whose application date is before March 31, 2004 is subject to the Patent Act Article 30 before revised in 2011. For more detailed information, please refer to page iii in the “Operational Guidelines for Applicants to Seek the Application of Exceptions to Lack of Novelty of Invention, Corresponding to the Patent Act Article 30 Revised in 2011.”)

When an applicant intends to use the Exceptions to Lack of Novelty of Invention for his/her patent application which is subject to the Patent Act Article 30 before revised in 2011, please refer to the following Operational Guidelines and follow proper procedures.

However, from October 1st, 2011, even in the case where the patent application is subject to the Patent Act Article 30 before revised in 2011, the concept of the “Proving Document” described in the Section 3.1 in the “Operational Guidelines for Applicants to Seek the Application of Exceptions to Lack of Novelty of Invention, Corresponding to the Patent Act Article 30 Revised in 2011” is applied.

Operational Guidelines for Applicants to Seek the Application of Exceptions to Lack of Novelty of Invention (PDF:500KB) (Japanese only)

If necessary, please refer to an academic group designated by the Commissioner of the Patent Office or an exhibition designated by the Commissioner of the Patent Office. (Both WebPages are Japanese only)

3. Matters to be taken into consideration

It should be noted that the Patent Act Article 30 is an exception to the principle where a patent shall not be granted to inventions disclosed prior to the filing of a patent application. Even in cases where your application is covered by the Article 30, if, for example, a third party had filed a patent application for the same invention or had published such invention prior to the filing date of your patent application, then you can't obtain a patent for your invention. Therefore it is strongly recommended that the patent application should be filed as early as possible.

Outline of the “Operational Guidelines for Applicants to Seek the Application of Exceptions to Lack of Novelty of Invention, Corresponding to the Patent Act Article 30 Revised in 2011”

Points

  • (1) Presentation of the statement methods for and examples of the "Proving Document" for the major mode of publication of invention to which the "Exceptions to Lack of Novelty of Invention" after the revision of the Patent Act is applicable.
  • (2) Statement to the effect that, if a certificate is prepared appropriately by the applicant himself/herself in accordance with a certain format and submitted within 30 days from the date of filing of the patent application, it will be authorized to have a certain probative value for the matters to be proved, as the “Proving Document”.

Outline

Scope of the “Operational Guidelines for Applicants to Seek the Application of Exceptions to Lack of Novelty of Invention, Corresponding to the Patent Act Article 30 Revised in 2011”

  • In principle, the Guideline shall be applied to patent applications filed on or after April 1, 2004.

1. Outline of the Article 30 revised in 2011

  • Due to the revision to Article 30 of the Patent Act in 2011, inventions made public at meetings and seminars, which are not academic conference designated by the Commissioner of the Patent Office, inventions made public on TV and radio, and inventions made public through sales, which were excluded under the previous exceptions are now covered by the new exceptions.
  • The exceptions to lack of novelty of invention are exceptions to the first-to-file rule and therefore, even in cases where your application is covered by Article 30, if, for example, a third party had created the same invention by himself/herself, and filed a patent application for the invention prior to the filing date of your patent application or published the invention prior to the filing date of your patent application, then you can’t obtain a patent for your invention.

2. Procedural requirements to seek the application of Article 30

  • An applicant for a patent who is seeking the application of Article 30, Paragraph (2) of the Patent Act is required to take the following three procedures as listed in (a) to (c).
    • (a) To file a patent application for the invention made public due to an act of the right holder(s) within six months from the date of publication
    • (b) To submit a document stating to the effect that the applicant is seeking the application of the Article 30, at the time of filing of the patent application
    • (c) To submit the "Proving Document" within 30 days from the date of filing of the patent application

3. Outline of the “Proving Document” provided for in Paragraph (3)

  • If a certificate is prepared appropriately by the applicant himself/herself in accordance with a certain format and submitted within 30 days from the date of filing of the patent application, it will be authorized to have a certain probative value for the matters to be proved, as the “Proving Document.”
  • In the "Proving Document" provided for in Article 30, paragraph (3) of the Patent Act, "Facts of Publication" and "Facts of Succession to the Right to Obtain a Patent" columns shall be set up and statements shall be made in accordance with the following method.
    • Statement methods for the “Facts of Publication” column
      • (i) Date of publication
      • (ii) Place of publication
      • (iii) Person(s) who published the invention
      • (iv) Contents of the invention published
    • Statement methods for the "Facts of Succession to the Right to Obtain a Patent" column
      • (i) Inventor(s) of the invention published
      • (ii) Person(s) having the right to obtain a patent at the time of the act causing the publication of the invention (right holder(s) at the time of the act)
      • (iii) Applicant(s) for the patent (the person(s) stated in the application)
      • (iv) Person(s) who published the invention
      • (v) Succession to the right to obtain a patent
      • (vi) Relationship between the right holder at the time of the act and the person who published the invention. (State that the person who published the invention made the publication of the invention as a result of the act of the right holder(s) at the time of the act).

[Last updated 28 December 2011]

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