Asia Patent Alliance
 Review of the Exception to Loss of Novelty Regulations
Review of the Exception to Loss of Novelty Regulations

Exception to Loss of Novelty of Invention regulations are provided in Article 30 of Japanese Patent Law. Provided that certain conditions are met, an exception is made and the invention treated as if it novelty has not been lost, despite having been made public prior to filing. Existing regulations had become unable to fully comprehend increasingly diverse modes of invention publication, covering only those inventions which had become public knowledge by means of being conducted in an experiment, described in a printed publication, made available to the public through the internet, presented at a Commissioner of Patents designated Academic Conference, or displayed at designated exhibitions etcetera. This resulted in disparities, such as internet distribution of a video introducing the invention being eligible, while a televised introduction was not.

It was therefore decided to expand the eligibility for the Exception to Loss of Novelty of Invention from that of a limited list structure to include inventions which have become public knowledge ‘due to the actions of those entitled to a patent’.

In the case of inventions filed with a patent office that have become public knowledge as a result of patent publication however, the intent of the laws is highlighted to clarify of lack of eligibility. The same action was taken with regard to the Design and Utility Model laws.

Guidelines when Exercising a Right of Priority

1. Even when employing a Right of Priority, there is no change to the requirement to file a claim to priority within 6 months of novelty being lost.

2. It is still necessary to apply for exception to loss of novelty for both PCT filings and Entry into the National Phase.

Regulations in China and Korea

In China, the scope of eligibility is much narrower than that of Japan, providing for display at International Expositions, presentation at an Academic Conference, and non-consensual exposure (Chinese Patent Law, Article 24). An invention is ineligible in cases of public knowledge of an examination, printed matter, or disclosure through the internet. In Korea, on the other hand, when the invention has lost novelty as a result of the actions of those entitled to a patent, as a general rule for any kind of action, including sale, the invention is treated as if it retained novelty.

 

  Form of Exception to Loss of Novelty Timing of Patent Filing Submission of Proof
Japan - Post Amendments Public knowledge ‘has its roots in the actions of those entitled to a patent’ Within 6 months of loss of novelty Within 30 days of filing of patent
Korea Public knowledge ‘has its roots in the actions of those entitled to a patent’ Same as Japan Same as Japan
China Display at international exhibitions, presentation at Academic conferences and non-consensual disclosure are eligible Internet and printed matter are ineligible. Same as Japan Within 2 months of filing of patent