On Exceptions to Lack of Novelty

February 21, 2003
HARAKENZO World Patent & Trademark Patent Law Firm
Patent Attorney Mitsuko YAMAGUCHI

Table of Contents
1. Provision for exceptions to lack of novelty
2. Points to keep in mind in taking advantage of the provision for exceptions to lack of novelty
3. Provisions for exceptions to lack of novelty in the United States, Europe, China, and Korea
4. References

1. Provision for exceptions to lack of novelty
Whether or not an invention has novelty is judged on the basis of facts at the time of the filing of the patent application.
However, excessively strict application of this principle may hamper technological development, and may be too harsh for inventors. Therefore, Article 30 of the Patent Law provides for exceptions to lack of novelty.
Article 30 of the Patent Law makes exceptions for lack of novelty if and only if an application is filed within six months from the date on which novelty is lost due to the following reasons:
(a) Experiment
(b) Presentation in a printed publication
(c) Presentation through electric telecommunication lines
(d) Presentation in writing at a study meeting held by a scientific body designated by the Commissioner of the Patent Office
(e) Exhibition
(f) Coming to be publicly known against the will of the person having the right to obtain a patent
The acts consisting reasons (a) to (e) for the lack of novelty need to be conducted by the person having the right to obtain a patent. However, in the case where the right to obtain a patent is transferred by the person having the right to obtain a patent, the successor may also take advantage of Article 30 of the Patent Law.
With the application of this exception clause, the invention which has come to be publicly known due to the above reasons shall be deemed not to have lost novelty, and therefore shall not be cited to reject the application for lack of novelty or inventive step.
However, the effect of the application of this provision is only that the invention is deemed not to have lost novelty, and not that the application date is set back. Therefore, it should be noted that the application will be rejected if another reason for lack of novelty occurs at a certain point after the disclosure of the invention and before the filing of the application.

2. Points to keep in mind in taking advantage of the provision for exceptions to lack of novelty
As described above, since the application of the exception clause for lack of novelty does not set back the application date, unnecessary reliance on this clause should be avoided. The following describes points to keep in mind if there is no alternative but to invoke this provision.
(1) An application must be filed within six months from the date on which the invention comes to be publicly known due to the acts constituting the reasons for lack of novelty. This application should be the application actually filed to the Japan Patent Office. Accordingly, in the case where an application filed to a foreign country is granted the benefit of an exception clause similar to that of Japan, and, on the basis of this application, a priority claim is made in applying to the Japan Patent Office, the application of Article 30 will be denied if it is filed after six months from the date on which the invention was disclosed.
(2) On the other hand, an application with an internal priority claim can take advantage of the exception clause if the necessary procedure is lawfully taken with respect to the prior application.
(3) The presentation at an academic conference must be a presentation at a study meeting held by a scientific body designated by the Commissioner of the Patent Office. It should be noted that the exception clause does not apply in the case where a presentation is made at an academic conference held by a foreign scientific body, since no foreign scientific body is currently designated. However, the exception clause can apply if a Japanese scientific body is a co-host of the academic conference.
(4) Since December 2001, universities are added as scientific bodies designated by the Commissioner of the Patent Office. As a result, a presentation made at a university designated as the scientific body will be treated in the same way as the academic conference. It is necessary, however, that the presentation be held by the university. Therefore, the exception clause does not apply to a presentation merely conducted in the university, and to presentations of doctoral, master's, and bachelor's theses, which are conducted at faculties and departments on a voluntary basis.

3. Provisions for exceptions to lack of novelty in the United States, Europe, China, and Korea
More than a hundred of states have exception clauses for lack of novelty. However, it should be noted that moratoriums allowed after the disclosure of an invention until the patent application (this is called a "grace period") vary from country to country. The following describes the grace period, the reasons for exceptions, and the availability of priority with respect to the grace period.
(1) Grace period
As in Japan, a grace period of six months is allowed in Europe, China, and Korea. In the United States, 35 U.S.C. 102(b) stipulates that an invention is not patentable if the invention is "patented or described in a printed publication in this or a foreign country" or "in public use or sale in this country," more than one year prior to the date of the application for patent in the United States.
This one-year period is called a grace period. In the United States, where a first-to-invent system is adopted, the novelty of invention is judged based on facts at the time the invention was made. Therefore, the grace period in the United States is different in meaning from the grace period in other countries, where a first-to-apply system is adopted. In the United
States, novelty is not lost just because the invention was disclosed, if the disclosure took place after the date on which the invention had been made. However, the application will be rejected unless it is filed within one year from the date on which the invention was disclosed.
(2) Reasons for exceptions
In the United States, there is no limitation as to reasons for exceptions. In Europe, however, exceptions are limited to the case where there is an evident abuse in relation to the applicant or his legal predecessor, and the case where the invention is displayed at a certain international exhibition. Therefore, it should be noted that the exception clauses in Europe do not apply to experiment, presentation in a printed publication, and presentation at an academic conference. In China, exceptions apply in the cases where the invention is displayed at a certain international exhibition; the invention is presented at an academic conference; or the contents of the invention is leaked by a third party without the permission of the applicant. Korea has a provision similar to that of the Japanese Patent Law.
It should be noted that, as described, the reasons for the application of the exception clauses vary from country to country. It should also be noted that, although some of the reasons for exceptions may look similar, there are differences in places and means of disclosure, and scopes of exhibitions.
(3) Availability of priority for the grace period
In the United States, Europe, China, and Korea, priority for the grace period is not available. For example, in a case where an application filed to Japan Patent Office is granted the benefit under Article 30 of the Japanese Patent Law, and, based on this application, an application with a priority claim is filed in one of the above countries one year later, the latter application will not be granted the benefit under the exception clause of that country.

4. References
1). YOSHIFUJI, Kosaku, Tokkyohou Gaisetsu (General Observations on Patent Law), Yuhikaku.
2) IWATA, Keiji, Kakkoku tokkyohou ni okeru shinkisei soushitsu no reigai
(Exception clauses for lack of novelty (grace periods) in patent laws of some countries), A.I.P.P.I., Vol. 46, No. 5, p. 270.
3. Japan Patent Office website.