Chapter 2 Novelty and Inventive Step - Japan Patent Office

Part II Chapter 2 Novelty and Inventive Step
"ornamental materials composed of alloy…," and "methods of killing insects using ..." according to
1.5.1(4).
(3) Claims defining products by the manufacturing processes (product-by-process claims)
It is understood that claims defining products by the manufacturing processes means
definitions that represent products per se gained as final products, unless otherwise interpreted
according to 1.5.1(2) above Note . Accordingly, the novelty of the claimed invention is denied when
other manufacturing processes are able to produce an identical product to that of the claimed
manufacturing process and the product is publicly known.
Note: This is because some structures of products cannot represent the products of the
inventions, these products are described only by the methods of manufacturing processes (such
as inventions relating to isolated protein), and it is inappropriate to make a distinction between an
invention defined by its structure and an invention defined by its manufacturing process.
Accordingly, products are interpreted according to above paragraph even though applicants
clearly intend to limit the products only to those manufactured by specific processes, such as "Z
obtained solely by process A."
[Example 1] "Protein manufactured by a manufacturing process P (with steps p1, p2, …and pn)"
In this example, the novelty of the invention is denied when known specific protein Z
manufactured by process Q is identical to the protein manufactured by process P, regardless of
the novelty of process P.
[Example 2] "Panels with a double-layer structure fixed by welding iron member A and nickel
member B"
In this example, if the method to obtain the same double-layer structure fixed by welding
other than welding method, the novelty of the invention is denied. However, since the panel
structures identical to those fixed by welding are not generally manufactured by methods other
than welding, the novelty of the invention is not denied unless the panels with a double-layer
structure fixed by a welding method are not publicly known,
1.5.3 Identifying Inventions Cited as Inventions Provided in Patent Act Article 29(1)(i) – (iii)
or Cited inventions
(1) Inventions that were publicly known
Inventions that were publicly known are inventions that are actually known by unspecified
persons through certain persons. Most of them are generally publicly known through lectures or
presentations, and the inventions are identified based on the factual details explained in such
lectures or presentations.
The details explained in lectures or presentations are interpreted based on the common
general knowledge, and other facts derived from the common general knowledge in the lectures
or presentations are used as a base for identifying the inventions that were publicly known.
(2) Inventions that were publicly worked
Inventions that were publicly worked are inventions that have been worked in a situation
where the contents of the inventions are or could be publicly known through machinery or
systems, and the inventions are identified based on the facts embodied through the machinery or
systems.
The facts embodied through the machinery or systems could be interpreted based on the
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