Japan IP News

Introduction of Requirement for Disclosure of Information on Prior Art

Content of Revision

  1. Article 36 (Applications for patent)
  2. Article 48 septies (Notification about prior art information)
  3. Article 49 (Examiner's decision for refusal)

Reason

The requirement for Disclosure of Information on Prior Art Documents as defined in the revised Patent Law is that the prior art known by an applicant shall be mentioned in the description of patent application when the application is filed; otherwise the application shall be rejected.
Under the revised Patent Law, even if the applicant fails to disclose the prior art in the description of the application as filed, this shall not result in the immediate issuance of reason for refusal, but, instead, it shall result in the issuance of an official communication requesting the applicant to disclose the prior art that they have known at the time of filing the patent application. If the applicant does not disclose the prior art in response to the official communication, a reason for refusal shall be issued. It is not necessary to disclose the prior art if the applicant becomes aware of the prior art after the application has been filed.
Under the revised Patent Law, the Examiner can utilize the information on the prior art provided by the applicant so that the examination of the patent application may be accelerated.
The prior art defined herein means literature that describes an invention relevant to the claimed invention, as defined in Article 29(1)(ⅲ)

Examples -In what cases is a patent application refused?-

  • After an applicant receives a notification under Article 48 septies, he/she submits neither a statement of his/her arguments nor an amendment of the specification.
  • After an applicant receives a notification under Article 48 septies, he/she submits an amendment which discloses prior art literature, but the prior art literature does not disclose any inventions related to the claimed invention.
  • After the applicant receives a notification under Article 48 septies, he/she submits a statement of his/her arguments in which the reason for non-disclosure of prior art literature is explained, but arguments are not convincing.