Global Patent System Comparison | Basic Principles of "Novelty" Examination (Asia Edition)

Invention must possess "novelty", which is the foundation of the patent system in almost all countries. Since it is usually difficult to directly prove that a technology is new, the patent systems of various countries have turned to requiring that new inventions do not form part of the existing technology. In this process of determining "not forming part of", apart from the identification of valid existing technology and the interpretation of the invention application, the most crucial aspect is the comparison of "whether they are the same". 

As the "prior art" has been briefly mentioned before, in this issue we mainly focus on Japan and provide a brief introduction to the country's principle of novelty determination. 

01 The Legal Basis of Novelty in Japan 

Japan's definition of novelty is mainly based on Article 29, as shown in the original text below. This article is regarded as setting out the conditions for granting a patent, including utility ("industrially applicable"), novelty (listing the circumstances of prior art), and inventiveness (unpatentable if easily achievable based on prior art). 

When it comes to the specific novelty examination, the Japanese Patent Examination Guidelines state that "where there are differences, the examiner determines that the invention defined by the claim is novel; where there are no differences, the examiner determines that the invention defined by the claim is not novel." 

02 Although not explicitly stated, in practice, "substantial identity" is also followed to destroy novelty. 

Although Japan does not explicitly incorporate the "substantial identity" principle into its patent law, in practice, the Japanese patent system also pays attention to "substantial identity" (実質同一): on the one hand, additions, deletions, and conversions based on common knowledge and conventional techniques are regarded as substantially identical; on the other hand, there is also an implicit consideration of the "same technical field, solving the same technical problem, and having the same expected effect" emphasized in the Chinese examination guidelines. 

For instance, in the Intellectual Property High Court's precedent case No. 10167 (Heisei 29 (Gyo Ke)) [Laminated Film Case], the patentee claimed that the patented film, compared to the comparative document, although the printing layer used similar raw materials to the patent, the thickness design was different, which could bring about better drug resistance, water absorption rate and other effects. However, the court held that the different thicknesses were merely "minor differences in specific means" used to achieve specific formability and mechanical strength, and "there were no other different new technical effects", thus the corresponding claim was the same as the comparative document. 

The Intellectual Property High Court of Japan, known as "Chiteki Shihon Kōtei-so," mainly handles the first instance of administrative litigation against the Japan Patent Office and the second instance of technically complex cases. In Japan, all first-instance technically complex infringement cases are concentratedly handled by the courts in Tokyo and Osaka. 

This "sameness" is also unrelated to the form of expression. For instance, even if the structure for which a patent is applied for already exists in reality as a physical object, it should still be determined that there is no novelty. (See the Supreme Court's decision of April 24, 1956, Civil Case No. 21, p. 853) 

Other principles, such as "comparison of individual features" (Chapter 2, Section 1.2 of Part III of the Examination Guidelines) and the impact of the disclosure of a lower-level concept on the novelty of a higher-level concept (Chapter 2, Section 3.2 of Part III of the Examination Guidelines), are consistent with those in China. 

In Japan, two successive applications by the same inventor for the same invention are not considered conflicting applications. 

In Japan, the "conflicting application" is called "kakushu sen'i" (where "sen'i" means "application"), and is also referred to as "quasi-public knowledge" or "presumption of public knowledge", mainly described in Article 29, Paragraph 2 of the Patent Law. 

In the Patent Law of Showa 34, in Japan, a subsequent application was only compared with a prior application that had already been disclosed. As long as the content was different, a patent could be obtained, which might lead to double authorization. Therefore, in Showa 45, the law was revised (refer to the annotated version of the "Patent Law" by the Japan Patent Office), which expanded the scope of comparison for "senzen" (prior application, Article 39 of the Patent Law), and at the same time, broadened the definition of "kōchi" (publicly known, Article 29, Paragraph 1 of the Patent Law), which was equivalent to establishing a new scope for "kōchi". 

It should be particularly noted that due to the historical reasons mentioned above, Japan's "conflicting application" provision does not cover the situation where the same applicant or the same inventor is involved. The term "identical" refers to the complete identity of the inventors or the applicants. If two identical applications are submitted successively by the same inventors or the same applicants, the Japan Patent Office will not reject the later application based on the "expanded priority" but will instead reject it based on Article 39 of the "priority" system, as the later application lacks "novelty". The result of the rejection is the same, but the basis is different. China does not have this exception. 

It can be seen that from the perspective of Japanese patent law, the second paragraph of Article 29, due to its involvement with prior art, the first-to-file system, and novelty, complements the novelty provision in the first paragraph of Article 29 and the new application provision in Article 39. Here, a simple comparison may be made - 

04 Japanese Patent Examination Process 

Total official fees: For invention patents, (grant + 3 years of annual fees) approximately 180,000 Japanese yen, equivalent to 9,000 RMB; for utility models, (grant + 3 years of annual fees) approximately 20,000 Japanese yen, equivalent to 1,000 RMB; for design patents, starting from 41,500 Japanese yen, which is related to whether there is a secret design, year, etc.