Period of Exception to Loss of Novelty is expanded from six months to one year

IZUMIYA, Reiko (Ms.)
Japan Patent Information Committee

It has been announced on the website of the JAPAN PATENT OFFICE (JPO) that the period of exception to loss of novelty has been expanded from six months to one year.

The revision is based on the Bill for the Law of Partial Revision of the Unfair Competition Prevention Law (Law No.33 dated May 30, 2018), which was announced on May 30, 2018. The revised Patent Law, Article 30 came into force on June 9, 2018.

The revised Patent Law, Article 30 is applied to patent applications filed on or after June 9, 2018. This revision is also applied mutatis mutandis to the Utility Model Law, and therefore, the period of exception to loss of novelty of utility models is also expanded to one year.

The JPO further discloses the revised “Examination Guidelines” and the revised “Examination Handbook” as well as“Procedures for Seeking the Application of Exception to Loss of Novelty of Invention, corresponding to the Patent Act Article 30” on their website.
“Examination Guidelines for Patent and Utility Model in Japan”
“Examination Handbook for Patent and Utility Model in Japan”
“Procedures for Seeking the Application of Exceptions to Loss of Novelty of Invention, corresponding to the Patent Act Article 30”

The “Examination Guidelines” and the “Examination Handbook” have been revised mainly in the point that “the period of exception to loss of novelty is expanded from six months to one year.” In addition, in the “Examination Handbook,” two items “3230 Patent Applications to which Article 30 of the Patent Act as amended in 2018 is Applicable” and “3231 Inventions that were published on or before December 8, 2017 under Article 30 of the Patent Act as amended in 2018 is Applicable” have been added.

In addition, “Operational Guidelines for Applicants to Seek the Application of Exception to Loss of Novelty of Invention, corresponding to the Patent Act Article 30 revised in 2018,” which is useful for preparing and filing an application claiming exception to loss of novelty, is also disclosed in the JPO’s website.

CAUTIONS:
(1)The revised Patent Law, Article 30 is NOT applied to inventions or utility models that were published on or before December 8, 2017, even in a case that an application is filed on or after June 9, 2018. That is, the benefit of the exception to loss of novelty having been expanded to one year under the revised Patent Law, Article 30 can be obtained only for inventions or utility models that were published on or after December 9, 2017.

(2) The Patent Law, Article 30 has been revised only in the point that the period of exception to loss of novelty is expanded from six months to one year.
It is still necessary that a patent or utility model invention be filed within the excepted period in Japan (i.e., to Japan Patent Office), or a PCT application designating Japan has be filed within the excepted period. That is, filing an application in a country other than Japan within the excepted period and filing a Japanese application claiming priority based on that foreign application is not recognized to meet the requirements for obtaining the benefit of exceptions to loss of novelty in Japan. Further, we are required to submit a document stating to the effect that the applicant is seeking the application of Article 30 at the time of filing of the patent application, and also to submit a document proving the fact that the invention meets the requirements for the application of Article 30, within 30 days from the date of filing of the patent application. These requirements have not been changed by the revision of the Patent Law, Article 30.