Trilateral Project 24.1-Biotechnology 146

(Case a)

The finding of "an invention described in a publication" is made based on the facts described in a publication. Matters described in a publication may be interpreted with reference to the common general knowledge. The matters which a person skilled in the art can directly derive from matters described in such a publication by taking into consideration the common general knowledge as of the distribution of the publication (hereinafter referred to as "matters essentially described, though not literally, in a publication") can be a basis for the finding of an invention described in a publication. Namely, an "invention described in a publication" means an invention which a person skilled in the art can identify on the basis of the matters either described or essentially described, though not literally, in a publication.

However, unless it is clear that an invention is described in a publication in such a manner that a person skilled in the art can make the product in case of a product invention or can use the process in case of a process invention, taking into consideration the common general knowledge as of the distribution of the publication, then, such an invention shall not be deemed as "a cited invention" under the Section 29(1)(iii). (Implementing Guidelines I-2-1.5.2(3))

(Case b)

The finding of "an invention described in a prior application" is made based on the facts described in a patent specification of prior application. Matters described in a prior application may be interpreted with reference to the common general knowledge. The matters which a person skilled in the art can directly derive from matters described in such an application by taking into consideration the common general knowledge as of the distribution of the application (hereinafter referred to as "matters essentially described, though not literally, in an application") can be a basis for the finding of an invention described in a prior application. Namely, an "invention described in a prior application" means an invention identified by "matters described" or "matters essentially described, though not literally", in a patent specification of prior application.

However, unless it is clear that an invention is described in a prior application in such a manner that a person skilled in the art can make the product in case of a product invention or can use the process in case of a process invention, taking into consideration the common general knowledge as of the filing of the prior application, then, such an invention shall not be deemed as "a cited invention" under the Section 29bis. (Implementing Guidelines I-2-3.3)

Where there is a difference between the two, they are deemed identical (substantially identical) if the difference is considered as a very minor difference (addition, deletion, or replacing of well-known or commonly used art, generating no new effects) in embodied means to solve a problem. (Implementing Guidelines I-2-3.4(2))

In addition, under the Japanese Patent Law, there is no provision for rejection on the ground of a lack of inventive step citing a prior art (Y) in the case b (i.e., in the case when a prior application (Y) has been published after the filing of the later application (Y').