Chapter 2 Novelty and Inventive Step - Japan Patent Office

Part II Chapter 2 Novelty and Inventive Step
inventions provide problems to be solved or advantageous effects of the inventions similar or
identical to those in the matters used to specify the inventions describing the functions or
characteristics, where the functions or characteristics of the cited inventions are highly likely to be
included in those of the claimed inventions.
In addition, the novelty of the claimed inventions shall be determined through regular
approaches rather than this special approach when possible.
(4) Claims defining the products by manufacturing processes
I. It is sometimes extremely difficult to determine the structures of products per se provided
in the claims defining the products by manufacturing processes. For these claims, as mentioned
in the above (3), the examiners shall send a notice of the reasons for refusal for the lack of
novelty when they have a reasonable doubt that products in the claimed inventions and cited
inventions are identical, without comparing products of the claimed inventions to those of the
cited inventions to find exact corresponding and differing points, unless differences are found in
other sections.
However, this approach should not be applied to the inventions, whose matters used to
specify the cited invention define the products by the manufacturing processes, as cited
inventions:
II. The following are examples in which the examiners should have a reasonable doubt:
- The cited inventions are found to provide products with similar starting materials to and
manufactured by the same manufacturing process as those of the claimed inventions;
- The cited inventions are found to provide products that have the same starting material
as and manufactured by the similar manufacturing process to those of the claimed inventions;
- After the filing of the claimed inventions for products, structures of the products that are
identical to those of the claimed inventions and the products have been publicly known before the
filing; and
- The cited inventions are found to be identical or similar to the arts described in the
working examples in the specifications or the drawings of the claimed inventions.
In addition, the novelty of the inventions shall be determined through regular approaches
rather than these special approaches when possible.
1.6 Notice of Reasons for Refusal under the Provision of Patent Act Article 29(1)
A notice of reasons for refusal is sent to applicants when the examiners have concluded
that claimed inventions are unpatentable under Article 29(1).
The applicants have opportunities to argue against the notice of reasons for refusal or
clarify their refused applications by submitting written opinions or certificates of experimental
results.
The reason for refusal is cancelled when the applicants deny the convictions of the
examiners that the claimed inventions are unpatentable according to Article 29(1) to the extent
that truth or falsity becomes unclear, by submitting written opinions or certificates of experimental
results. The claimed invention is refused due to lack of novelty when the convictions of the
examiners do not change.
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