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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  Handling of Procedures Affected by COVID-19 Pandemic (updated April, 2020)

The JPO has been asking applicants to submit an original certificate(the document proving that the requirements for seeking application of Exceptions to Lack of Novelty of Invention are satisfied) with Affixation of Name and Seal or Signature by applicants for Procedures of Seeking the Application of Exceptions to Lack of Novelty of Invention stipulated in Article 30, Paragraph 2 of the Patent Act, which must be submitted within 30 days from the filing date. (For details of the required certificate, see the Operational Guidelines in 2.Procedures for Seeking the Application of Exceptions to Lack of Novelty of Invention).

However, in response to COVID-19 Pandemic, the JPO will provide the following measures to help applicants having trouble submitting the certificate with Affixation of Name and Seal or Signature.

  • If you are having the above-mentioned COVID-19 related trouble, please go ahead and submit the certificate without Affixation of Name and Seal or Signature within 30 days from the filing date.
  • In this case, please include the following statements for the section of the form where Affixation of Name and Seal or Signature is required:
    • - Affixation of Name and Seal or Signature is not currently available due to COVID-19 pandemic.
    • - The certificate with Affixation of Name and Seal or Signature will be submitted as soon as it is ready.
  • Please submit the certificate with Affixation of Name and Seal or Signature (original, not a copy) to the JPO as soon as it is ready through a Written Report.
    Note: If it is not submitted, Exceptions to Lack of Novelty of Invention may not be applicable for examination.

Further, if you are not able to submit the certificate within 30 days from the filing date due to COVID-19 Pandemic, the relief measures under Article 30 (4) of the Patent Act are also available. The relief measures can be applied to applicants who are having trouble creating the certificate itself, in addition to the condition that the applicants are not able to submit the certificate with Affixation of Name and Seal or Signature.

For details on the relief measures under Article 30 (4) of the Patent Act, 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.”

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 30 April 2020]

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Examination Standards Office,
Administrative Affairs Division,
Japan Patent Office

E-mail : PA2A10@jpo.go.jp 

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