Procedures for Designation of Scientific Bodies and Exhibitions
under Section 30 of the Patent Law
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[ Contact Point for Inquiries ]
International Affairs Consultation Unit (Gaikoku-sodan),
International Affairs Division,
Japan Patent Office
E-mail: PA0842@jpo.go.jp |
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December 18, 2001
Japan Patent Office
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Designation of Universities as Scientific Bodies
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In light of various opportunities for the publication of research results
at universities, the Japan Patent Office has decided to modify procedures
for the designation of scientific bodies in accordance with Section 30
(1) of the Patent Law (applicable under Section 11 of the Utility Model
Law) to extend the coverage of the provisions to the publication of research
papers in the course of research activities at universities (i.e., universities
and technical colleges as set forth in Section 1 of the School Education
Law <law No. 26, 1947> and Inter-University Research Institutes as set
forth in Section 9bis (1) of the National School Establishment Law <law No. 150, 1949>)
as described hereunder.
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Outline
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Section 30 of the Patent Law stipulates that a presentation which a person
having the right to obtain a patent has made in writing at a study meeting
held by a scientific body designated by the Commissioner of the Japan
Patent Office shall be regarded as an exception to the loss of novelty.
As it is deemed appropriate to apply such an exception to research activities
the revision of its criteria for the designation of scientific bodies
by the Commissioner of the Japan Patent Office, that universities can
now be designated by the Commissioner as such scientific bodies. Consequently,
the publication of research papers at meetings held by the universities
designated as relevant scientific bodies can be treated in the same manner
as publication at academic conferences.
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However, this system merely has the effect of an invention disclosed in
a research paper by the patent applicant prior to his/her filing of the
concerned application not being considered to be in the public domain
in relation to the application, provided that prescribed conditions are
met, and therefore, merely has the effect of the publication not giving
grounds for the rejection of the aforesaid application. As such, it is
necessary to keep in mind that a patent is not obtainable if a party other
than the above-mentioned applicant himself/herself has filed an application
for the same invention prior to his/her filing of the application. It
is also noted that the publication of the research paper results in the
loss of novelty in countries or regions which do not have similar stipulations,
when patent applications are filed in these countries or regions. Therefore,
it is advisable to file applications prior to the publication of research
papers for proper right protection.
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References
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| Scientific Bodies and Exhibitions Designated by the Commissioner of the Japan Patent Office |
1. Measures for Relief from Lack of Novelty, etc.
(1) Section 30 (1) and (3) of the Patent Law
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The Patent Law stipulates several requirements regarding the filing of
patent applications and the granting of rights.
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The requirement of novelty regards whether or not the subject matter of
a patent application was already known to the public prior to the filing
of the application. If the contents described in an application were made
public in or outside Japan through printed publication prior to the filing
date, the patent application cannot be granted a patent due to lack of
novelty. (Section 29 (1) of the Patent Law)
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However, as an exception to the above-mentioned rule, with regard to an
invention made public in writing at a research meeting in or outside Japan
held by a scientific body designated by the Commissioner of the Japan
Patent Office (Section 30 (1) of the Patent Law) or an invention exhibited
at an exhibition which is held in Japan by a party other than the government
or any local public entity but is designated by the Commissioner of the
Japan Patent Office or at an international exhibition which is held in
the territory of a country not party to the Paris Convention nor a Member
of the World Trade Organization by its government or any local public
entity or a party authorized thereby and is designated by the Commissioner
of the Japan Patent Office (Section 30 (3) of the Patent Law), the patent
application concerned can be granted exception to the lack of novelty
of invention, provided that the person having made the publication or
the exhibition (i.e., the inventor or the successor to the inventor) files
the following documents:
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a document filed within six (6) months thereafter along with the patent
application stating that the applicant seeks application of Section 30 of the Patent Law; and |
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a document filed within thirty (30) days after the date of application
certifying that the invention claimed in the patent application qualifies
for applicability of the exception to the lack of novelty of invention. |
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Moreover, as for an invention exhibited at an exhibition held by the
government or any local public entity in Japan (hereinafter referred to
as "government, etc.") or at an international exhibition held in the territory
of a country party to the Paris Convention or of a Member of the World
Trade Organization by its government, etc. or a party authorized thereby,
the patent application concerned can be granted exception to the lack
of novelty of invention, even without designation by the Commissioner
of the Japan Patent Office, provided that the person having made the publication
or the exhibition (i.e., the inventor or the successor to the inventor)
files the following documents:
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a document filed within six (6) months thereafter along with its patent
application stating that the applicant seeks application of Section 30 of the Patent Law; and |
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a document filed within thirty (30) days after the date of application
certifying that the invention claimed in the patent application qualifies
for applicability of the exception to the lack of novelty of invention.
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| (2) Section 11 (1) of the Utility Model Law |
The Utility Model Law includes provisions similar to those of the Patent
Law. (Sections 3 (1) and 11 (1) of the Utility Model Law)
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| (3) Section 9 (1) of the Trademark Law |
| The Trademark Law also stipulates several requirements for registration
of trademarks. One of such requirements is that the first filed application
is granted the trademark right when there are multiple applications for
the same or similar trademark. |
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However, as an exception to the above-mentioned rule, as regards a trademark
used in respect of goods exhibited or services offered at an exhibition
which is held in Japan by a party other than the government or any local
public entity but is designated by the Commissioner of the Japan Patent
Office, or at an international exhibition which is held in the territory
of a country not party to the Paris Convention nor the Trademark Law Treaty
nor a Member of the World Trade Organization by its government or any
local public entity or a party authorized thereby and is designated by
the Commissioner of the Japan Patent Office, the trademark application
concerned can be granted exception of being deemed to have been filed
on the day when the goods were exhibited or the services were offered
at the exhibition, provided that the person having exhibited the goods
or offered the services files the following documents: |
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a document filed within six (6) months thereafter along with the trademark
application stating that the applicant seeks application of Section 9
of the Trademark Law; and |
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a document filed within thirty (30) days after the date of application
certifying that the trademark of the concerned application qualifies for
applicability of the exception.
(Section 9 of the Trademark Law) |
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| Moreover, as for a trademark used in respect of goods exhibited or services
offered at an exhibition held by the government, etc. in Japan or at an
international exhibition held in the territory of a country party to the
Paris Convention or the Trademark Law Treaty or of a Member of the World
Trade Organization by its government, etc. or a party authorized thereby,
the trademark application concerned can be granted exception of being
deemed to have been filed on the day when the goods were exhibited or
the services were offered at the exhibition, even without designation
by the Commissioner of the Japan Patent Office, provided that the person
having exhibited the goods or offered the services files the following
documents: |
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a document filed within six (6) months thereafter along with the trademark
application stating that the applicant seeks application of Section 9
of the Trademark Law; and |
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a document filed within thirty (30) days after the date of application
certifying that the trademark of the concerned application qualifies for
applicability of the exception. |
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| (4) Section 4 (1) and (2) of the Design Law |
Under the Design Law, a design application for which the applicant files
the following documents within the specified period can be granted exception
to the lack of novelty without designation by the Commissioner of the
Japan Patent Office (Section 4 of the Design Law):
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a document stating that the applicant seeks application of Section 4
of the Design Law, which should be submitted along with the concerned
application for design registration and within six (6) months from the
date when the design claimed in the application became publicly known
due to the act of the creator of the design or the successor to the creator
or against his/her will; and |
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a document certifying that the design claimed in the application qualifies
for exception to the lack of novelty, which should be submitted within
fourteen (14) days after the date of the filing of the application. |
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| 2. |
Reasons for Rejecting Trademark Registration in relation to an Exhibition
Prize and Exceptional Provisions thereof |
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| A trademark cannot be registered if it comprises a part
or all of a mark which is identical or similar to a prize awarded at an
exhibition held in Japan by the government or a local public entity (the
government, etc.) or at one not held by the government, etc. but designated
by the Commissioner of the Japan Patent Office or at an international
exhibition held outside Japan by the government, etc. or a party authorized
thereby. |
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Notwithstanding this, if the person who received such a prize at the exhibition
files an application for trademark registration for the mark as part of
a trademark, such an application may be exempted from the aforementioned
requirement for trademark registration, provided that the applicant for
trademark registration files a document certifying that the application
concerned qualifies for applicability of the provision in the parenthesis
(i.e., proviso) of Section 4 (1) (ix) of the Trademark Law. |
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Please attach the following documents to the written request:
(Note: Only a body outside Japan is requested to file a translation. (Section
2 of the Regulations to Implement the Patent Law)) |
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A copy of the articles of association or its equivalent as well as the
translation (the main part of the text only) thereof;
(The document must contain the name of the body, the address of its head
office, its objectives and its activities.) |
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Periodical(s) issued by the body as well as the translation (the cover
page and the contents only) thereof;
(The periodical must carry research papers by the members of the body.)
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Activity plans and the translation (the entire document) thereof; and
(The body's activities must be shown in the concrete.) |
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Member list (no need for translation). |
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| (2) |
Bodies outside Japan are to carry out procedures through
their Japanese agents. (Section 8 of the Patent Law) |
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| (3) |
A written request for designation of a scientific body will
be processed within one (1) month after receipt. Please note, however,
that designation may not be obtainable if there are any defects in the
documents. |
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| (4) |
Should there be any changes in the state of activities of
the body in respect of the items separately specified in "Designation
and Cancellation of Designation of a Scientific Body" (see below), please
be sure to report those changes promptly at each time to the Commissioner
of the Japan Patent Office. Failure to comply with this may result in
the cancellation of the designation. |
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| (5) |
Please indicate the contact details for inquiries. |
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| (1) |
Please indicate the applicable provision next to the caption
in such a manner as "(application for designation in accordance with the
provision of Section 30 (3) of the Patent Law)". |
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Please attach the following documents to a written request:
(Note: Translation is required only for an exhibition held outside Japan.
(Section 2 of the Regulations to Implement the Patent Law)) |
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Substance of the exhibition and the translation (the entire document)
thereof;
(Such information as the title, venue and period of the exhibition must
be contained in the document.) |
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A copy of the articles of association or its equivalent, and the translation
(main part of the text only) thereof; and
(The name of the organizer of the exhibition, the address of its head
office, its objectives and operations must be shown in the document.)
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Operational plan of the main organizer for the present year and the
translation (the entire document) thereof.
(The activities carried our or to be carried out by the organizer must
be shown in the document.) |
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| (3) |
Entities outside Japan are to carry out procedures through
their Japanese agents. (Section 8 of the Patent Law) |
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| (4) |
For requests under Section 4 (1) (ix) of the Trademark Law,
please add "Section 4 (1) (ix) of the Trademark Law" to the title, and
attach a "Document showing the Exhibition Prize" in accordance with Section
22 (3) of the Regulations to Implement the Trademark Law. |
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| (5) |
Requests shall be filed no later than one (1) month before
the start of an exhibition. |
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A written request for designation of an exhibition will
be processed within one (1) month after receipt. Please note, however,
that designation may not be obtainable if there are any defects in the
documents. |
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| (7) |
Please indicate the contact details for inquiries.
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Designation and Cancellation of Designation of
a Scientific Body
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December 18, 2001
Japan Patent Office
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| Designation of a scientific body pursuant to the provisions
of Section 30 (1) of the Patent Law (including its application under Section
11 (1) of the Utility Model Law) shall be subject to the conditions below
in addition to the provisions of relevant laws and regulations. |
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| 1. |
Designation shall not be available for a scientific body
not meeting the requirements as shown below. |
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(1) |
One of the main objectives of the body shall be the publication
of research in relation to natural science and exchange of technical knowledge. |
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(2) |
The number of members of the body shall not be extremely
limited. However, this shall not apply to bodies which do not have any
members due to their status as special juridical entities, foundations
or universities (i.e. universities and technical colleges as set forth
in Section 1 of School Education Law l<aw No. 26, 1947> and Inter-University
Research Institutes as set forth in Section 9bis (1) of the National School
Establishment Law ). |
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(3) |
The body publishes a periodical or its equivalent carrying
articles on members' research. |
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(4) |
The organizational structure for carrying out activities
and responsible person(s) shall be clearly defined. |
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Upon designation of a body, the additional
conditions as shown below shall be attached. |
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(1) |
In the event that a party who has published his/her inventions
or devices in a written form including manuscripts and drawings (hereinafter
referred to as "documents") at a study meeting held by the body such as
an academic lecture meeting, a class or a symposium, or a successor to
such a person (a person who has succeeded the right to obtain a patent
or a utility model right), requests issuance of a certificate necessary
to obtain the application of provisions of Section 30 (1) of the Patent
Law (including its application under Section 11 (1) of the Utility Model
Law), the body must promptly issue such a certificate based on that fact. |
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(2) |
In the event that the body falls under any of the following
conditions, the body must report it to the Commissioner of the Japan Patent
Office immediately: |
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(a) |
any change to the objectives or the operational substance of the body; |
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(b) |
any change to the representative person of the body; |
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any material change to the number of members of the body; |
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any change to the address of the head office of the body; |
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discontinuance of publication of periodical(s) or the like; and |
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any other material change to the operation of the body. |
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(3) |
If the body is requested by the Commissioner of the Japan
Patent Office to submit its articles of association, periodicals or the
like and/or information on the study meetings actually held, it must promptly
respond to the request. |
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(4) |
Failure to comply with any of the above conditions may result
in the cancellation of designation of the body. |
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Documents filed with the Japan Patent Office
must be written in Japanese.
Notwithstanding this, a power of attorney, a certificate of nationality
and other documents written in a language other than Japanese may be filed,
provided that they are accompanied by the translations into Japanese thereof.
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Notes on Cancellation of Designation
In cases where a body is found to fail to meet any of the requirements
specified in paragraph 1 above, the Commissioner of the Japan Patent Office
may cancel the designation pursuant to the provisions of Section 22 (1)
of the Regulations to Implement the Patent Law (including its application
under Section 23 (2) of the Regulations to Implement the Utility Model
Law). A designated body may request in writing the cancellation of its
designation to the Commissioner of the Japan Patent Office. |
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Designation of an Exhibition
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January 4, 2000
Japan Patent Office
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| With respect to designation of an exhibition pursuant to
the provisions of Section 30 (3) of the Patent Law (including its application
under Section 11 (1) of the Utility Model Law) and Sections 4 (1) (ix)
and 9 (1) of the Trademark Law, the following conditions shall be applicable
in addition to the provisions of the relevant laws and regulations: |
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An exhibition not meeting the requirements below shall not
be designated. |
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(1) |
An exhibition shall, irrespective of its name such as "Exhibition" or
"Trade Fair," publicly exhibit products, etc. concerning industry or application
of technology for the purpose of contributing to the development of industry
at large, in particular, to the improvement of industrial technology or
the formation of the reasonable market order. |
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(2) |
With regard to an exhibition held in Japan, the organizer shall be in
principle a special juridical entity or a public-service corporation.
Otherwise, the exhibition shall be supported in principle by the government
or a local public entity. |
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(3) |
The venue and period of the exhibition shall be reasonable in light
of its objectives. |
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(4) |
Qualifications for exhibitors and visitors shall not be restricted in
principle. Under unavoidable circumstances, however, certain restrictions
on account of justifiable reasons in relation to, among others, the objectives
and the scale of the site may be made. Even in such cases, qualifications
shall be non-discriminatory in application of such restrictions. |
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(5) |
The number of exhibitors, and the types and number of exhibited goods
shall be reasonable in light of the objectives of the exhibition. |
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(6) |
In the request for designation of an exhibition pursuant to the provisions
of Section 4 (1) (ix) of the Trademark Law, the "document showing the
exhibition prize" shall be attached in accordance with the provisions
of Section 22 (3) of the Regulations to Implement the Trademark Law. |
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Upon designation of an exhibition, additional
conditions as shown below shall be attached. |
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(1) |
The petitioner shall report to the Commissioner of the Japan Patent
Office any changes to the description of the request for designation without
delay, even after the grant of designation. |
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(2) |
The organizer shall issue a certificate concerning the fact of exhibition
upon the request of the exhibitor or successor to the exhibitor. |
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(3) |
The organizer shall submit a report containing the number of visitors,
the list of exhibitors and the table of exhibited goods to the Commissioner
of the Japan Patent Office promptly after conclusion of the exhibition.
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(4) |
Failure to comply with the above conditions may result in the future
rejection by the Commissioner of the Japan Patent Office of an application
by the same organizer for the designation of an exhibition. |
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| 3. |
Documents filed with the Japan Patent Office
shall be written in Japanese. Notwithstanding this, a power of attorney,
a certificate of nationality and other documents written in a language
other than Japanese may be filed, provided that they are accompanied by
the translations into Japanese thereof. |
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