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Home> Systems/Procedures> Laws and Policies> Laws and Guidelines> 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

April 30, 2020
Japan Patent Office

NEW  Abolishing Affixation of Seal and Signature in the proving document（updated December, 2020）

In order to seek the application of Exception to Lack of Novelty of Invention, corresponding to the Patent Act Article 30(2), a document must be submitted within 30 days from the filing date proving the fact that the “disclosed invention” is an invention to which the provision of Article 30(2) may be applicable (in this article, hereinafter, referred to as “proving document”). In the proving document, Affixation of Name and Seal or Signature by all applicants has been required so far.

However, based on the decision to carry out a review about the procedure of the required Affixation of Seal in the “implementation plan for regulatory reform” (Cabinet Decision, 17 July, 2020) and the discussion to aim to improve user convenience by digitizing application procedures (Promoting Paperless and Abolishing Affixation of Seal) at the 13th meeting of the Intellectual Property Committee of the Industrial Structure Council, Abolishing Affixation of Seal and Signature for the proving document has been decided.

In addition, Affixation of Name, where it is sufficient with the one typed with PCs, is still required. However, it became sufficient as long as Affixation of Name for the proving document is carried out by at least one of the applicants. (For further details, see 2. 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 2018).

This new procedure shall also be applied to the proving document that is supposed to be submitted from now on of patent applications that have already been filed. That is, Affixation of Seal and Signature to the proving document thereof is no longer necessary and Affixation of Name for the proving document thereof is to be carried out by at least one of the applicants.

As for “Handling of Procedures Affected by COVID-19”, if you have already submitted the proving document with Affixation of Name but not with Affixation of Seal or Signature because it was unable to Affix the Seal or Signature within the designated time limits, no further action would be necessary.

In regard to relief measures due to the adverse effects of the COVID-19, the relief measures under the Patent Act Article 30 (4) are available for applicants who are even unable to prepare the proving document itself within the designated time limits. For further details, see the Handling of Procedures Affected by COVID-19 Coronavirus (1. (1)).

1. Purpose of Exceptions to Lack of Novelty of Invention (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. It may be too severe to applicants to apply this principle to all cases and never grant a patent to the inventions that have been published by the applicants through conference, presentation, or the like prior to filing. Moreover, 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 one year from the publication date.

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

For seeking the application of Exceptions to Lack of Novelty of Invention, an applicant should submit:

  • (1) the document stating that the applicant is seeking application of Exceptions to Lack of Novelty of Invention, at the time of filing; and
  • (2) the document proving that the requirements for seeking application of Exceptions to Lack of Novelty of Invention are satisfied, within 30 days from the date of filing.

The time period when Exceptions to Lack of Novelty of Invention may be applied was expanded to one year from 6 months due to the revision of the Patent Act Article 30 in 2018. 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 2018.” These Operational Guidelines apply to patent applications to which Patent Act Article 30 revised in 2018 applies.

In principle, a patent application whose application date is on or after June 9, 2018 is subject to the Patent Act Article 30 revised in 2018. However, a patent application for an invention that was published on or before December 8, 2017 is not subject to the application of Patent Act Article 30 revised in 2018. For more detailed information, please refer to page iii, iv 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 2018.”

Due to Abolishing Affixation of Seal and Signature in the proving document, the JPO has revised “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 2018.” This shall be applied to patent applications filed before this update.

References

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 the 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.

Exemplary Timelines of Patent Application and Conference/Presentation

(image)Exemplary Timelines of Patent Application and Conference/Presentation

  • If you are planning to file at foreign office(s), you have to give an attention to Exceptions to Lack of Novelty of Invention at the office(s). In some cases, you can't obtain a patent for your invention due to domestic laws/regulations at the office(s) if you publish the invention by yourself before application.
  • If you are planning to seek for the application of Exceptions to Lack of Novelty of Invention for two or more published inventions, you have to take the procedure for seeking the application of Exceptions to Lack of Novelty of Invention for each of the published inventions.
  • The Patent Act shall apply mutatis mutandis to the Utility Model Act, and the time period that is subject to the application of Exceptions to Lack of Novelty of Utility Model is expanded to one year from 6 months due to the revision of the Patent Act in 2018.

[Last updated 28 December 2020]

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