The concept of novelty under the Japanese Patent Act includes not only prior art disclosed to the public, but also inventions that were not yet publicly known but had already been filed in earlier applications by others. This specific type of prior art is governed by Article 29-2 of the Patent Act, often referred to as the “whole content approach” or “secret prior art.”
Below is the English translation of Article 29-2:
Article 29-2
Notwithstanding Article 29, paragraph (1), a person may not be obtained a patent if an invention in a patent application is identical to an invention or device described in the description, patent claims, utility model claims, or drawings which originally attached to the written application for another patent application or utility model registration, filed prior to the date the relevant patent application is filed, with regard to which an issue of the patent gazette giving the particulars set forth in the items of Article 66, paragraph (3) of the Patent Act, is publishes pursuant to Article 66 paragraph(3), the application is published, or an issue of the utility model bulletin giving the particulars set forth in the items of Article 14, paragraph (3) of the Utility Model Act (Act No. 123 of 1959) is published pursuant to Article 14, paragraph (3) of that Act subsequent to the filing of the relevant application (this excludes any invention or device whose inventor is the same as the inventor of the invention in the relevant patent application); provided, however, that this does not apply if, at the time a patent application is filed, the person filing that patent application and the person filing the other application for patent or for utility model registration are the same person.
In simpler terms, this provision prevents double patenting based on earlier-filed, unpublished patent or utility model applications by others. Even if such prior applications have not yet been made public at the time of your filing, they can still be used to reject your application if the contents are the same.
The content of an invention described in the specification or drawings, including content outside the scope of the claims, is disclosed by the patent being laid open or published in a patent gazette. Even with an application filed before a prior application is laid open or published in a patent gazette, when the content is the same as an invention described in the specification or drawings of the prior application, the latter application cannot be published as new technology.
Based on the purpose of the patenting system to protect a new invention in return for making the invention public, it would not be proper to grant a patent for the invention described in such a case, and so the application will be rejected.
Specifically, if the invention in the claims of the later patent application is the same as the invention disclosed in the specification or drawings of the earlier patent application, the later patent application will be rejected.
The invention described in the specification of the earlier application is one that can be understood by the actual description in the specification and matter that is equivalent to the description. Matter that is equivalent to the description includes what can be derived by technical common sense at the time the later patent application was filed.
Technical common sense is technical knowledge that is common among those skilled in the art (including commonly known or conventional art) or empirical rules. The invention claimed in the later patent application and the invention described in the specification and drawings of the earlier patent application are compared. If there is no difference, or there is a difference but it is only minor with respect to embodiment means for solve the problems (and therefore substantially the same), the later patent application is rejected.
