Loosing novelty regarding patents is a vital issue globally. It should be well understood in order to avoid the potential business and value loss than it can entail.
In Japan, when an invention is disclosed to the public before a patent filing, such as if the product is posted on the web, published in a newspaper or magazine, and / or an explanation is given so that the invention can be understood, the novelty is lost “by the inventor’s own actions”. However, if an application is filed within one year from the date of said loss of novelty, the Japan patent Office (JPO) examination will be concluded as “not losing novelty” (Article 30 of the Japanese Patent Law). This is called an “exception for loss of novelty.” This treatment is similar in the United States, although with even broader exceptions there than in Japan (US Patent Law, Article 102).
On the other hand, the European EPO (European Patent Office) is very strict in this regard: there are very few allowable reasons for relief from loss of novelty, and such relief will be typically be denied at the EPO. China is equally strict as it uses the EPC (European Patent Law) as a model to create Chinese Patent Law. Therefore, when Japanese applicants apply for the exception of loss of novelty outside of Japan, it is a very critical situation and you need to be careful.
Regarding this point, I have visited related European organizations (patent attorneys’ associations in each country) many times as a representative of such Japanese institutions, and discussed this point with my counterpart representatives in Europe. However, the law cannot always be amended because of “Legal Uncertainty”. ” The fact that the related law has still not been amended in Europe makes clear that the same circumstances and background essentially remain.
It is noteworthy that, if the concept of “Legal Uncertainty” itself is unclear and it could mean that “the interests of a third party will be harmed by making an exception for loss of novelty”, the JPO conducts surveys to assess the current legal system. The fact is that no problematic situations, ie. problems that develop into a dispute, have occurred on the user side.
As a result, many Japanese inventors and companies are very anxious regarding their IP in Europe and China in this regard. Also, in China, while the law is very strict, in cases in which an exception claim for loss of novelty is made in relation to a Japanese application in “de facto operation”, it is also treated exceptionally in Chinese examinations. However, as this is just “a de facto operation”, it is unclear whether or not such cases will be treated exceptionally.
Finally, however, there seems to be a breakthrough in European and Chinese applications in this regard. In the case of Europe, in review practice, novelty is considered a loss only in the case of “Enabling Disclosure” i.e. if only the concept of the invention is disclosed, it is not treated as loss of novelty. The handling of such cases is basically the same in China.
In contrast, again, in the case of Japanese filings, the provisions for exceptions to loss of novelty allow for a very wide range of exceptions, so we feel free to use this system: however, in many cases, only the appearance of the product, etc. is disclosed, and it seems that there are few cases where substantive content (enabling disclosure) of the invention is really publicly known, except via presentations at academic conferences where detailed supporting documents provide the explanation. Once again, loosing novelty regarding patents is a vital issue globally that we must be quick to address.
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