Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

  　　 An applicant for a Japanese patent application is required to provide the information concerning prior art in the specification of the Japanese patent application (Patent Law Article 36(4)(ii)).

1. What is the information to be provided ?

         The information to be provided is "a source/ sources" of an invention that is/are related to the invention claimed in a patent application and that has/have been known to the public through publication at the timing of filing the patent application (i.e. prior art document) (Patent Law Article 36(4)(ii)). 

Here are examples of description of a source/sources of an invention:

　　     I. Publication of unexamined patent application No. 2012－○○○○○○
　       II. Patent Gazette No.○○○○○○ 
   　   III. Written by ○○○○○○, “Computer Science College Course (Volume 11) Computer Architecture”, 2nd edition, Modern Science Co., Ltd., November, 1985, p.123-127

2. What happens if the source is not provided in the specification?

       The examiner notifies the applicant accordingly and gives the applicant an opportunity for amending the specification to add the source (Patent Act Article 48-7).  This notification is like “an advance notice” and does not constitute an Office Action for rejection of the patent application.

3. What happens if the source is still not provided after the notification?

       The examiner notifies the applicant the Office Action for rejection of the patent application and further gives the applicant another opportunity for amending the specification to add the source (Patent Act Article 49(v)).  Failing to amend the specification, nonetheless, the patent application shall be rejected eventually.

4. Is there an exception?

       Where there is no information on prior art document to be provided at the timing of the patent application, the applicant needs not to provide the source.  In this case, however, it is desirable to describe the reasons in the specification why the applicant does not provide the source.

5. Does the applicant need to disclose information on prior art document which the applicant knows after filing the patent application?

       Patent Law Article 36(4)(ii) and any other articles do NOT require the applicant to disclose information on prior arts after filing the patent application.  Therefore, the applicant does not need to provide the source of references which are typically cited in the office actions, search reports or others for corresponding applications.

       If you need more information in this matter, please visit the JPO website at http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/1312-002_e.htm or contact us at http://en.aigipat.com/contact/index.html.


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