Patent Act Article 30: Exception to Loss of Novelty of Invention

Please consider this provision for the exception to loss of novelty as an urban legend in practice. Therefore, it is recommended to file a patent application, etc., without using the provision for the exception to loss of novelty. I repeat, please try to avoid using it as much as possible in practice.

Although I will provide an explanation of the articles below, please consider it basically for exam preparation.

1. Purpose

An invention that lacks novelty (Article 29, Paragraph 1) cannot, in principle, be granted a patent. However, if it were impossible to obtain a patent at all for an invention after its disclosure by the inventor, it could be
harsh for the inventor. Furthermore, uniformly denying the ability to obtain a patent in such a way would also be contrary to the purpose of the Patent Act (Article 1). Therefore, when a person who has the right to obtain a patent files a patent application after the invention has been disclosed under prescribed conditions, the provision for the exception to loss of novelty of an invention (Article 30) is provided to treat the invention as if its novelty had not been lost due to the prior disclosure of the invention, as an exception.

2. Scope of this Article

・Prescribed conditions refer to cases where the invention was disclosed against the will of the person who has the right to obtain a patent (Article 30, Paragraph 1), or cases where the invention was disclosed due to the act of the person who has the right to obtain a patent (Article 30, Paragraph 2).

Against the will (Article 30, Paragraph 2) means that it became publicly known despite the intention to keep it secret.

・Publication in a printed publication
Means a case where the person who has the right to obtain a patent proactively published it in a printed publication themselves (Supreme Court H01/11/10)

・Article 30 does not apply to disclosure via published patent gazettes or foreign patent gazettes.
Note that if it is disclosed via a gazette after you have published it yourself, you cannot receive the application of Article 30. After a gazette is issued, handle it with an application accompanied by a priority claim under Article 41, etc.

・Twice publicly known, multiple times publicly known
If they are in an inseparable relationship, it is sufficient to receive the application of Article 30 for the first act.

・Regarding a patent application accompanied by a Paris Convention priority claim, the date of the "patent application" in Article 30, Paragraph 2 means the date of the patent application filed in Japan (Tokyo High Court H09/03/13) It is interpreted as meaning the date of the patent application filed in Japan for the following reasons: (1) Interpreting it this way does not violate the principle of national treatment (Paris Convention Article 2). (2) The priority right of the Paris Convention does not recognize that the second country application date automatically retroacts to the first country application date. (3) Article 4B of the Paris Convention does not stipulate that one shall not suffer disadvantages due to acts performed before the first country application. (4) Interpreting it as the first country application date would extend the exception period for loss of novelty to 1 year and 6 months, which would give an unfair advantage to the person who has the right to obtain a patent.

・In the case of an international patent application, a certificate that can receive the application of Article 30, Paragraph 1 can be submitted within 30 days after the date belonging to the domestic processing standard time (Article 184-14, Enforcement Regulation Article 38-6-3)

3. Documents to be submitted to receive the application of the exception to loss of novelty

When filing a patent application for an invention that has lost novelty due to the applicant's own act, the documents to be submitted to receive the application of the exception to loss of novelty are: (1) a document stating the intent to seek the application of the provision, and (2) a document proving that it is an invention that can receive the application of the provision (Patent Act Article 30, Paragraph 3).

Among these, "(1) a document stating the intent to seek the application of the provision" must be submitted at the same time as the application.

However, if novelty was lost against the will of the person who has the right to obtain a patent, there is no need to submit documents to receive the application of the exception to loss of novelty if the application is filed within one year after the novelty was lost (Patent Act Article 30, Paragraph 1).

※ If it is "objectively" clear at the time of the patent application that the loss of novelty occurred against the will, it is considered effective to communicate that fact via a written statement or similar.

4. Reasons not attributable

The "reasons not attributable to the person" stipulated in Article 30, Paragraph 4, etc., of the Patent Act are sometimes called "reasons not attributable."

As far as I have looked at civil law reference books, "reasons not attributable" did not appear. Also, "reasons not attributable" was not listed in the Small Dictionary of Law, 5th Edition (Yuhikaku, 2016).

However, the term "attributable reasons" does appear. Attributable reasons are, for example, "grounds not attributable to the obligor" as stated in Article 415, Paragraph 1 of the Civil Code.

The other day, when I checked with a university professor, it seems that the term "non-attributable reasons" is rarely used in the Civil Code or similar laws.

Perhaps the term "non-attributable reasons" is jargon specific to the intellectual property industry.

・Patent Act Article 30

●Related Articles
・Documents to be submitted to apply for the exception to loss of novelty under the Patent Act
・

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