When filing patent applications in Japan, applicants must be acutely aware that no remedial measures exist if the necessary documentation for exceptions to lack of novelty is not submitted during PCT national phase entry.
This article outlines critical considerations for applying these exception provisions, detailing the filing requirements and essential information needed for evidentiary documentation.
Procedures for Seeking the Application of Exceptions to Lack of Novelty of Invention, corresponding to the Patent Act Article 30
https://www.jpo.go.jp/e/system/laws/rule/other/patent/hatumei_reigai.html
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
https://www.jpo.go.jp/e/system/laws/rule/other/patent/document/hatumei_reigai/operational-guidelines.pdf
1 . Essential Points
This article specifically addresses key considerations for applying exceptions to lack of novelty for PCT applications entering the Japanese national phase.
The fundamental requirement to remember is that for PCT applications, the prescribed documents must be submitted during national phase entry into Japan to benefit from these exception provisions. No remedial procedures exist if this submission is overlooked, and document submission during examination is prohibited. Importantly, even when a “Declaration as Non-Prejudicial Disclosure or Exceptions to Lack of Novelty (PCT Rule 4.17(v), 26ter.1)” has been filed in the international phase, additional documentation remains necessary during the national phase.
For inventions with multiple prior disclosures, applicants must submit evidence for each disclosure event. We strongly recommend conducting a thorough assessment at the time of filing to identify all instances where the invention may have been disclosed. Under certain prescribed conditions, it may be possible to omit documentary evidence for secondary and subsequent disclosures.
2 . Three Key Requirements for PCT Applications to Qualify for Exceptions
For PCT applications seeking exception to lack of novelty, three procedural requirements apply. If a “Declaration as Non-Prejudicial Disclosure or Exceptions to Lack of Novelty” was submitted during the international phase, only requirement 2 (Document (A) stating that the application seeks the exception) is waived. Requirements 1 and 3 remain mandatory.
Per requirement 1, the international application must be filed within one year from the date the invention was first disclosed (when the invention became known to unspecified persons without confidentiality obligations).
The deadline for fulfilling requirements 2 and 3 is within 30 days after the expiration of the national phase entry deadline. In practical terms, these documents must be submitted during national entry into Japan and cannot be submitted in time for the examination stage.
3 . Information Required for Preparing the Proving Document (B)
The proving document (B) must substantiate two essential elements: (1) that the patent application was filed within one year of the invention’s disclosure, and (2) that the invention was disclosed through the right holder’s actions and the same right holder filed the patent application.
To substantiate these requirements, the following information is typically necessary:
1. Date of disclosure
2. Place of publication
3. Description of the disclosed invention
4. Information on inventor, disclosure, applicant, succession of rights, etc.
(i) The person(s) who disclosed the invention
(ii) The inventor(s) of the disclosed invention
(iii) The right holder(s) for filing at the time of disclosure
(iv) The patent applicant(s)
(v) The chain of title for the right to obtain a patent
(vi) The relationship between the right holder(s) at disclosure (iii) and the disclosing person(s) (i)
For requirement 1, supporting documentation will vary based on the disclosure method—publications, websites, exhibitions, etc.
For requirement 2, a factual chronology of the rights transfer must be provided, starting with the inventor, through the right holder at the time of disclosure, and culminating with the patent applicant. This necessitates precise documentation of both the disclosure date and any rights transfers. If the chain of title is accurately represented, no separate assignment documentation is required.
4 . Q＆A
When an invention is published in a non-Japanese foreign language, translations of the published documents (theses, articles, etc.) can generally be omitted from the submission.
For applications filed in Japan claiming Paris Convention priority based on a foreign application filed after disclosure, this exception provision applies only if the Japanese application is filed in Japan within one year after the disclosure. (For PCT applications, the international filing date must fall within one year of the disclosure, whereas for applications claiming Paris Convention priority applications, the actual filing date in Japan must be within one year of the disclosure.)
Additionally, disclosures in patent gazettes published by patent offices or WIPO are specifically excluded from these exception provisions.
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