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Operational Guidelines on Treatment of Exceptions to Lack of Novelty of Invention

December 10, 1999
Examination Standards Office
Coordination Division

Relevant provisions concerning exceptions to lack of novelty of invention

(Sections 30 and 184quater decies of the JPL)

Section 30 of the JPL

In the case of an invention which has fallen under any of the paragraphs of Section 29(1) by reason of the fact that the person having the right to obtain a patent has conducted an experiment, has made a presentation in a printed publication, has made a presentation through telecommunication lines, or has made a presentation in writing at a study meeting held by a scientific body designated by the Commissioner of the Patent Office, application of the provisions under Section 29(1) and (2) on the invention claimed in a patent application filed by such a person within six months from the date on which the invention first fell under those paragraphs shall be deemed not to have fallen under any of the paragraphs of Section 29(1).

omitted

4. Any person who desires the application of Subsection (1) or the preceding subsection shall submit a written statement to that effect to the Commissioner of the Patent Office simultaneous to the patent application. Within 30 days of the filing of the patent application, the said person shall also submit to the Commissioner of the Patent Office a document proving that the invention which fell under any of the paragraphs of Section 29(1) is an invention that can fall under Subsection (1) or the preceding subsection.

 184quater decies of the JPL

Notwithstanding Section 30(4), any applicant for an international patent application who desires the application of Section 30(1) or (3) may submit to the Commissioner of the Patent Office a written statement to that effect and a document providing that the invention that fell under any of the paragraphs of Section 29(1) is an invention that can fall under Section 30(1) or (3) during the period prescribed in an ordinance of the Ministry of International Trade and Industry in which the relevant time for the national processing occurs, regardless of the provisions under Section 30(4).

1. Significance of the legal amendment

Since Section 29(1)(iii) of the JPL was amended to incorporate inventions that became available to the general public through telecommunication lines as a ground for lack of novelty in the same way as inventions described in distributed publications, Section 30(1) was also amended to exempt presentation through telecommunication lines from lack of novelty in the same way as for presentation in publications.

In the past, the exception to lack of novelty was only applicable to cases where an invention that fell under any of the paragraphs of Section 29(1) due to the applicant's own act (conducted an experiment, made a presentation in a printed publication, made a presentation in writing at study meeting, or exhibited at an exhibition) and the invention claimed in the patent application were the same. If those two inventions were different, the exception to lack of novelty was not applicable, and thus, the invention claimed in the patent application was sometimes rejected as an invention that could easily have been made on the basis of the invention published by the applicant himself/herself (Section 29(2)). Presentations at study meetings usually emphasized scientific significance or achievement, and the content of the presented document often did not coincide with the content of the patent application that emphasized the scope of the right or description requirements. Therefore, such a situation could serve as a certain hindrance in acquiring patents to those who placed importance on presentation at study meetings or presentation of technical papers.

In order to remedy this situation, the exception to lack of novelty was made applicable also to cases where an invention published due to the applicant's own act and the invention claimed in the patent application were not the same.

2. Invention described in Section 30(4) of the JPL

  • (1) An "invention that fell under any of the paragraphs of Section 29(1)" refers to an invention that fell under any of the paragraphs of Section 29(1) by making a presentation etc. of the invention.
  • (2) An "invention that can fall under Section 30(1) or the preceding paragraph" refers to an invention that was presented etc. under Section 30(1) or (3).

3. Document proving the act of presentation through telecommunication lines

  • (1) The document proving the act of presentation through telecommunication lines need to include the content of the information (printout etc. of the website etc. in which the information was presented), the indication of the time of publication of the information, the name of the presenter, and the URL of the website in which the information was published. In this case, it is desirable to attach a certificate by a person with authority or responsibility for the publication, maintenance, etc. of the information concerned.
  • (2) If the examiner judges that there is any suspicion with regard to the submitted document proving the act of presentation through telecommunication lines, he/she inquires to the indicated contact on whether the information has been altered. If the suspicion is not resolved, the examiner notifies this to the applicant with a notice of rejection etc.

4. Application of the provisions under Section 29(1) and (2)

If the exception to lack of novelty is applicable to a patent application due to the information indicated by the submitted document of proof, the said information shall not be treated as prior art information in determining each subsection of Section 29 concerning the patent application.

5. Time of application

These operational guidelines shall apply to patent applications filed on and after January 1, 2000. (Sections 1 and 2 of Supplementary Provisions of the Law Partially Amending the Japanese Patent Law (Law No. 41 of 1999))

[Last updated 23 February 2000]

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