㸴 Use of Standards Development Documents
in Patent Examinations (*)
In the process of formulating a technical standard, in addition to already formulated standards, various
technical documents are submitted, such as draft standards subject to adoption and standard proposal
documents (contributions) submitted by participants in standards development (hereinafter collectively referred
to as “standards development documents”). Appropriate use of these documents as prior art documents in patentexaminations is considered to contribute to maintaining and improving the quality of patent examinations.
However, for many of standards development documents, it is not easy to determine the nature of prior art
whether it is publicly known prior art or known to the public through publication. Therefore, the purpose of thisresearch is to obtain suggestions concerning the use of standards development documents in patentexaminations, and guidelines concerning the future policy for organizing such documents as examinationmaterials, and more specifically to collect information about the document management policies of standards
developing/setting organizations in Japan and abroad and the handling of standards development documents atoverseas intellectual property offices and thereby deliberating about the use of standards development documentsin patent examinations through discussions at a committee of experts.

Ϩ Introduction
1

Background and purpose of thisresearch
In the process of formulating a technicalstandard, various technical documents (in thisreport, these documents are hereinaftercollectively referred to as “standards development
documents”), such as draft standards subject toadoption and standard proposal documents(contributions) submitted by participants instandards development, are submitted in addition
to already formulated standards. Appropriate useof these documents in patent examinations asprior art documents for patent examinations is
considered to contribute to maintaining andimproving the quality of patent examinations. It
seems to be necessary to organize the following
points for the purpose of further promoting theuse of standards development documents in the
future.
First, it is necessary to organize informationthat is necessary in determining whether
standards development documents can be used inpatent examinations. For many standards
development documents, it is not easy todetermine whether the document is publicly
known (specifically, whether it is publicly known(publicly known) and whether it is a distributed
publication (publicly known through publication)).
Second, it is also necessary to take theperspective of understanding user need for theuse of standards development documents as priorart documents and obtaining guidelines

concerning standards development documents
which should be given priority when organizing
such documents as examination materials.
Therefore, the primary purpose of thisresearch study is to collect information about the
document management policies of standards
developing/setting organizations in Japan andabroad and the handling of standards development
documents at overseas intellectual property
offices and thereby obtain suggestions concerning
the use of standards development documents inpatent examinations through discussions at acommittee of intellectuals. In addition, thesecond purpose thereof is to obtain suggestions
concerning the future policy for organizing such
documents, such as guidelines concerning
standards development documents which should
be given priority when organizing such
documents as examination materials.
2 Methods used in this research study(1) Survey of public information
We surveyed and organized information
concerning standards development documents inJapan and abroad, such as the outline, document
management,
confidentiality
control,andqualification requirements for members, etc. ofeach standards developing/setting organization,
mainly by using Internet information. The
standards developing/setting organizations inJapan and abroad that were covered by thissurvey are the International Organization forStandardization(ISO),theInternational
ElectrotechnicalCommission(IEC),theInternational Telecommunication Union (ITU),(*) This is an English summary by Institute of Intellectual Property based on the FY2014 JPO-commissioned researchstudy report on the issues related to the industrial property rights system.

IIP Bulletin 2015 Vol.24● 34 ●

the European Telecommunications Standards
Institute (ETSI), the American National Standards
Institute (ANSI), the IEEE-SA, the USB-IF, theOMA, the PCI-SIG, the Wi-Fi Alliance, the 3GPP,
the DVB, the Japanese Industrial Standards
Committee (JISC), the Association of Radio
Industries and Businesses (ARIB) and theTelecommunication
Technology
Committee(TTC).
Determining
whetherastandarddevelopment document can be used in patentexamination as a prior art document is nothingother than determining whether said standard
development document is publicly known(hereinafter the mere statement of being“publicly known” means both the case pertaining
to Article 29, paragraph (1), item (i) of the Patent
Act and the case pertaining to item (iii) of said
paragraph), specifically, whether the standard
development document is positively understoodin determining whether the invention described
therein falls under the “inventions that were
publicly known” (publicly known) as prescribed in
Article 29, paragraph (1), item (i) of the Patent
Act or the “inventions that were described in a
distributed publication, or inventions that weremade publicly available through an electric
telecommunication line” (publicly known throughpublication, etc.) as prescribed in item (iii) of said
paragraph. Therefore, we surveyed 50 judicial
precedents concerning patent lawsuits that werefiled in Japan in relation to the question ofwhether a prior art document, etc. is publicly
known, and analyzed them with the advice of
attorneys at law.
(2) Domestic interview surveys
In order to understand the actual conditionsof standards development activities by companies,
we conducted interview surveys with 10
companies which actively participate in standards
development activities and strategically exploit
technical standards. In addition, in order tosurvey the actual conditions of committees,
mainly those in Japan, we conducted domestic
interview surveys with the Information
Processing Society of Japan (IPSJ) and the Japan
Business Machine and Information System
Industries Association (JBMIA), both of which arebodies that deeply engage in standards
development activities, for example, by serving
as the domestic secretariat of an internal
committee of a standards developing/settingorganization. We conducted interview surveys
with the JISC, the ARIB and the TTC, which aredomestic
standards
developing/settingorganizations, mainly in relation to informationthat cannot be obtained through survey of public
information for the purpose of understanding theactual conditions of operations of committees for
preparing standards and management of
documents
handled,etc.
instandards
developing/setting organizations.
(3) Overseas interview survey
In order to survey the actual conditions of
the use of standards development documents inpatent examinations in countries other than Japan,
we conducted interview surveys with theEuropean Patent Office (EPO) and the KoreanIntellectual Property Office (KIPO), and also
compiled information obtained through literaturesearch with regard to the United States Patent
and Trademark Office (USPTO). We also
conducted interview surveys with the ISO, theIEC and the ITU, all of which are international
standards
developing/settingorganizations,mainly in relation to information that cannot be
obtained through survey of public information forthe purpose of understanding the actual
conditions of operations of committees for
preparing standards and management of
documents
handled,etc.
instandards
developing/setting organizations.
(4) Consideration by the committee
We established a committee consisting of
persons of learning and experience who haveexpert knowledge relating to this research andstudy,
persons
involved
instandards
developing/setting organizations, persons incharge of standards development activities atcompanies, persons in charge of intellectual
property at companies, attorneys at law andpatent attorneys. At the committee, we held
discussions and conducted analysis from atechnical standpoint and received advice fromparticipants.

ϩ Survey of Domestic
Precedents

Judicial

1

Method of searching judicial precedents
It is considered that the question of whethera prior art document, etc. falls under any of theitems of Article 29, paragraph (1) of the Patent
Act is determined in patent lawsuits filed inrelation to the question of whether the prior art
document, etc. is publicly known. The provisionsof those items are as follows: item (i): inventions
that were publicly known in Japan or a foreign● 35 ●IIP Bulletin 2015 Vol.24

country, prior to the filing of the patentapplication; item (ii): inventions that were
publicly worked in Japan or a foreign country,
prior to the filing of the patent application; item(iii): inventions that were described in a
distributed publication, or inventions that weremade publicly available through an electric
telecommunication line in Japan or a foreigncountry, prior to the filing of the patentapplication. In light of these provisions, we
extracted 50 relevant judicial precedents.
2

Analysis of judicial precedents
We surveyed the extracted 50 judicial
precedents and analyzed them with the advice of
attorneys at law.
In relation to a determination concerning the
distributed publication as prescribed in Article 29,
paragraph (1), item (iii) of the Patent Act, there
are a few judicial precedents citing the judgmentof the Second Petty Bench of the Supreme Courtof July 4, 1980; 1978 (Gyo-Tsu) 69, such as the
judgment of the First Petty Bench of theSupreme Court of July 17, 1986; 1986 (Gyo-Tsu)18) which is regarded as the reference. In therelevant judgment, the court determined, basedon the following three points, that there is no
problem in finding that the relevant document
falls under a distributed publication: (1) the
distributed publication as prescribed in Article
29(1)(iii) of the Patent Act refers to a document,
drawing or other information communication
medium equivalent thereto that was reproduced
for the purpose of disclosure to the publicthrough distribution and was actually distributed;(2) it is not limited to a document of which a
considerable number of reproductions from theoriginal are widely provided to the public; and (3)it may be a document which is issued by copying
the original thereof in each case if the original
itself has been published and there is anestablished system whereby the public can freely
inspect the document and a copy of the document
is issued upon request of the public without delay.
Next, we summarized and organized thefollowing four perspectives based on the trends ofthe judicial precedents.
Perspective 1: Regarding the nature of a document
or information
In many judicial precedents, the facts
concerning the nature (for example, a material
distributed in a study group, pamphlet foradvertising, catalogue, manual or written
proposal), content and purpose of a document

IIP Bulletin 2015 Vol.24

affect a determination concerning whether theinvention is described in a distributed publication
or a publicly known invention. In judicial
precedents, the court determines the nature,content and purpose of a relevant document andtakes into account whether the document isscheduled to be widely distributed or published tothird parties or whether the document isrecognized as having been widely distributed or
published to third parties. If the document isrecognized as such, the invention described in
the document is determined to be an invention
described in a distributed publication or a publicly
known invention. Otherwise, the document is notdetermined to be a publication.
Perspective 2: Regarding confidentiality obligationand maintenance of confidentiality
Mainly, it is relevant if there is an explicit
agreement to keep the information confidential
such confidential agreement, and if there is no
explicit agreement on confidentiality, the court
takes into account the existence or absence of an
implicit confidentiality obligation based on thenature and content of a document or information.
The court finds that a document or information is
publicly known if it finds that there is neither
explicit
agreementonmaintenanceof
confidentiality
nor
implicit
confidentiality
obligation in relation to the document or
information. There is a case where the court
ruled that the confidentiality obligation under the
principle of good faith is recognized if it isobjectively obvious that a document is a trade
secret even if there is no explicit agreement on
maintenance of confidentiality therefor, andthereby determined that the document is not a
publication. On the other hand, in another judicial
precedent, the court determined that a material
distributed at a workshop of an international
conference is a distributed publication because
the host of the workshop distributed it without
imposing any confidentiality obligation and those
who received it consider that they can freely useit.
Perspective 3: Regarding the nature of a meeting
The point at issue is the case where third
parties cannot necessarily freely attend a meeting.
It is pointed out that a workshop of aninternational conference has a certain degree of
publicity because experts, journalists, etc. who
belong to a European or U.S. university, research
institute or pharmaceutical company can attend
even though attendees to the meeting are limited● 36 ●

to invited guests.

2

Perspective 4: Regarding the date on which an
invention became publicly known
The date of publication of a catalogue,
pamphlet, instruction handbook (manual), etc. is
not necessarily clear. In such cases, the court
determines the date on which an invention
became publicly known by using peripheral
information, such as a newspaper announcing thatthe relevant product is to be put on sale, amagazine, information on a website andadvertisement.

Ϫ Intellectual Property Offices
1

EPO
The EPO has established cooperative ties
with the IEEE, the ETSI, the ITU and the IEU,
respectively, and is thereby actively carrying
forward the use of standards development
documents in patent examinations. Furthermore,
the EPO also uses the documents of the 3GPP,
the IETF (Internet Engineering Task Force), etc.
which disclose their standards development
documents on the web.
In EPO's examination practice, a standard
development document is cited as a prior art
document if it first becomes available to the
public pursuant to Article 54 of the European
Patent Convention and forms part of the state of
the art.
The state of the art is described in Chapter
IV “State of the art” in Part G “Patentability” in
the Guidelines for Examination in the European
Patent Office. Referring to 7.2.1 and 7.6 in said
Chapter, the requirements for using a standard
development document in a patent examination
are that there is no confidentiality contract
concerning the document and that the document
has been made available to the public before thedate of filing or the date of priority. It isconsidered that the EPO has agreed on the use of
documents that satisfy the aforementioned
requirements with standards developing/settingorganizations and receives provision thereof
based on the agreement. Standards development
documents obtained by the EPO are accumulated
in a database within the EPO, which is not open
to the public, and can be used by examiners.
The EPO considers it important to cooperatewith standards developing/setting organizationsin the future because the ICT field will be
expandedthroughaccumulation
withconventional art.

KIPO
The standards developing/setting organizations
whose standards development documents the KIPO
uses in patent examinations are the 3GPP and the
IETF, which disclose information to the public, as
well as the IEEE, etc. which provide paid data
provision services together with provision of
papers. The KIPO also uses the public
information of the ITU, the ETSI, etc. whichanyone can access.
In the KIPO's examination practice, astandard development document is cited as aprior art document if it falls under any of the
subparagraphs of Article 29, paragraph (1) of theSouth Korean Patent Act. The provisions on
novelty in the South Korean Patent Act are very
similar to those in the Japanese Patent Act (itemsof Article 29, paragraph (1)). In addition, thePatent Examination Guidelines contain thesection “3.3 Invention prescribed in a distributed
publication” in 3. Relevant provisions in Chapter
2, as well as the section “3.4 Inventions
distributed
tothepublicthroughtelecommunication
line.”
Therefore,
theguidelines are also similar to the JapaneseExamination Guidelines in many points.
3

USPTO
We picked up points of focus from literature
information.㸯
Examiners at the USPTO also have a needfor the use of standards development documents.
The examiners receive provision of informationfrom the STIC, which is a library facility run by
the USPTO by accessing the NPL website or byobtaining hard copies. They use at a minimum theIEEE standards. In addition, information aboutstandards, such as those of the 3GPP, isincorporated in the “public pair” that is a USPTO
database.
At the USPTO, it is considered that
information collected based on a memorandum of
understanding concluded with a standards
developing/setting organization is not necessarily
applicable to Section 102 of the new law as “priorart.”

ϫ Major Standards Developing/Setting
Organizations
International organizations with which we
conducted an interview are described below.
z● 37 ●ISO[Standards]㸸ISO standards are available for

IIP Bulletin 2015 Vol.24

sale. In Japan, the standards can be purchased
through the JSA (Japanese Standards Association).
Draft International Standards (DIS) and Final
Draft International Standards (FDIS), which aredraft standards, are also available for sale.
[Distribution, management, publication, etc.
of documents]: Documents handled by the ISO
are mainly standards (Draft International
Standards (DIS), Final Draft International
Standards (FDIS) and International Standards(IS)) and other documentations (Working Drafts(WDs), Committee Drafts (CDs), Technical
Reports (TRs), Technical Specifications (TSs) andPublicly Available Specifications (PAS)), and they
are called N-documents. Basically, the secretaries
upload them on the ISO system named “eCommittee.” The date on which a document isposted is attached, but it is not attached to the
document. WDs are information available only tothe members of a relevant working group (WG),
and are managed by IDs and passwords. When adocument is posted, the relevant secretary
informs the national secretariat to that effect byemail, and the national secretariat notifies themembers of the national committee thereof. The
members who have their own IDs and passwords
access the eCommittees to obtain the document.
The downloaded document is also distributed tothe members of the committee who do not have
ID and password, and the information is also
shared by the persons concerned at companies towhich the members belong, for the purpose of
consideration. It is also possible to obtain
information about the stage where a standard
under development or a withdrawn standard is atpresent with respect to each TechnicalCommittee (TC) from the “Standards catalogue”
on the ISO's website that is open to the public.
[Regarding the confidentiality obligation]:
There are no established strict provisions on theconfidentiality obligation , and there are also no
special provisions on the confidentiality
obligation in relation to the committee activitiesof domestic organizations. The confidentiality
obligation is within the bounds of common sense.
z

IEC[Standards]: The IEC standards can bepurchased from the JSA, but they cannot be
obtained for free. Standards development
documents other than actual standards are also
not in the state of being available from thewebsite for free. The IEC Members can accessthe Management Server and the Technical Server,and can inspect the documents stored thereon.

IIP Bulletin 2015 Vol.24[Distribution, management, publication, etc.
of documents]: There are the cases where
electronic data attached to an email is submitted
to the Central Office and the cases where a
proponent uploads data to the prescribed place inthe server. Distribution is conducted by way ofdownloading from the server. Both processes aremanaged by IDs and passwords.
Availability of a document depends on thecurrent stage of the document in thedevelopment process. At the initial stage, only
members of a working group (WG) that handles
the document can obtain the document. On theother hand, at a later stage in the process, thedocument is widely distributed by the National
Committee (NC).
At the IEC, a document is deemed to be
published at the time when it is uploaded to the
IEC's server and becomes available for inspection
by the members of the relevant working group.
However, this does not mean publication to thegeneral public. A member of a working groupaccesses a working document by using his/herlogin ID and password.
[Regarding the confidentiality obligation]:
There are no provisions on the confidentiality
obligation. The IEC's documents are considered
to be open to the public because there is no
confidentiality obligation.
[Regarding cooperation with patent offices]:
The IEC provides the EPO with all the
documents, including working documents, bygiving it the right to access the IEC's server
because the IEC considers a working document
to become open to the public when the document
is submitted to a relevant working group of theIEC.
The IEC cooperates with patent offices forthe purpose of ensuring that its documents arehelpful for patent examinations as prior art.
z

ITU
[Standards] The ITU-T Recommendations
and the ITU-R Recommendations are available to
the general public for free via the ITU's website.
Other standards development documents are notin the state of being available for access via thewebsite for free.
[Distribution, management, publication, etc.
of documents]: Documents are mainly submitted
by direct upload to the server of the ITU-T, and it
is possible to obtain the documents by direct
download through access to the server. The ITU
Members can access documents used at meetingsfrom the account of the TIES (Telecommunication● 38 ●

Information Exchange Service). The ITU Member
States can obtain all documents from three sectors(ITU-T, ITU-R and ITU-D). Sector Members canobtain only documents in a relevant sector,
respectively. The ITU Member States and the
ITU-T Members can access the documents of therelevant Study Group (SG) and all the otherdocuments.
[Regarding the confidentiality obligation]:
The ITU Member States and the ITU-T Members
are not required to sign any confidentiality or
non-disclosure contract in order to participate indiscussions at a SG or receive any ITU-T-related
document.
[Regarding cooperation with patent offices]:
Partnership between intellectual property offices
and standards developing/setting organizations isbeneficial to both parties. Intellectual property
offices are able to improve the quality of theirpatentexaminations
byaccessinganaccumulation of volumes of related technicaldocuments while standards developing/settingorganizations
are
able
to
gain
betterunderstanding of patent activities in various
technical fields subject to their authorities. The
EPO is an ITU-T Sector Member, and it itself hasaccess to all documents that are available for
ITU-T Sector Members. The ITU is providing the
EPO with an additional service to enable the EPO
to download specific ITU-T documents from amirror website.

Ϭ Results of Interviews
Domestic Companies

withWe organized the answers of the
respondents to the interviews with companies
from the following four perspectives.
z
Information about document management,
confidentiality obligation, etc. of participating
standards developing/setting organizations
A common answer was that there had beenneither
explicit
provisions
ontheconfidentiality obligation nor provisions on
document management in relation to de jurestandards developing/setting organizations.
In most cases, a person who is eligible formembership of a committee is a member ofthe organization or deliberative body, whichis almost always a corporate member. A
personoflearning
andexperience(university teachers, etc.) often becomes a
member of a committee as needed. Membersof a committee and intellectuals who suit theneeds of the committee participate in the

z

z

z

meetings of the committee at the proposal
stage, and persons outside rarely freely
participate therein.
Regarding rules for the filing of patentapplications in standards development
activities, all the interviewed companies
answered that it was fundamental tocomplete the filing of a patent application for
an invention for which a patent application
should be filed before submission of acontribution, etc.
There have been almost no cases in which aright for technology disclosed in standards
development activities was unintentionallyobtained by another person.
There was no opinion that clearly denies useof standards development documents inpatent examinations among all the 10
interviewed companies. Most of thosecompanies answered that they in principle
agreed to use standards development
documents in patent examinations as priorart documents. As for the fields in which theuse of such documents in patentexaminations is expected, the companies
pointed out the fields in which patents areactively exploited, the ICT field, the field of
wireless communication technology, etc.
Standards development documents that arehighly technically valued as the seeds ofpatents are the first proposal documents.

ϭ Consideration of Use of Standards
Development
Documents
inPatent Examinations
In this Chapter, we consider therequirements for using standards development
documents in patent examinations in light of thecontent of Chapters II to V and discussions heldat this research study committee.
1

Legal grounds toconsideration, etc.

be

taken

into

z

Patent Act
As indicated in Chapter II, whether astandard development document can be used in apatent examination as a cited document in orderto deny novelty or an inventive step is probably
determined in relation to Article 29, paragraph(1), item (i) or (iii) of the Patent Act. That is, adetermination will be made on the question ofwhether the invention pertaining to the
document falls under the “inventions that were

● 39 ●IIP Bulletin 2015 Vol.24

publicly known in Japan or a foreign country, prior
to the filing of the patent application” (publicly
known) as prescribed in Article 29, paragraph (1),item (i) of the Patent Act or the “inventions thatwere described in a distributed publication, orinventions that were made publicly available
through an electric telecommunication line inJapan or a foreign country, prior to the filing of
the patent application” (publicly known throughpublication, etc.) as prescribed in item (iii) of said
paragraph. However, in consideration of the JPO's
actual examination practice, there is a limitation
to the ex officio search and finding of facts byexaminers, and it is difficult to determine“whether the invention was publicly known” inrelation to item (i) of said paragraph at theexamination stage. Therefore, in organizing
standards
development
documentsasexamination materials, it is realistic to determine
whether standards development documents fallunder “distributed publications” and present toexaminers the documents that fall under item (iii)of said paragraph as examination materials.
Consequently, discussions are held on the use ofstandards development documents in patentexaminations with a central focus on the questionof whether item (iii) of said paragraph isapplicable (that is, whether a standard
development document can be considered to fallunder a “distributed publication” or to have been
“made publicly available through an electric
telecommunication line” (publicly known throughpublication, etc.))

Supreme Court shown in Chapter II. In relation
to standards development documents, whether astandard development document has become
available for inspection by unspecified persons
through distribution at a committee may be
determined.
“Publicly
available
throughanelectric
telecommunication line”
In consideration of the Examination
Guidelines, Part II, Chapter 5, 1, in relation to
standards development documents, whether
information uploaded on the server of a standards
developing/setting organization is available foraccess by unspecified persons via the Internet
may be determined.
2

Items to be considered in determining
whether it is appropriate to use astandard development document in apatent examination
The following five items, A to E, should betaken into consideration in determining whether
a standard development document can be used inpatent examinations based on the judicial
precedents shown in Chapter II and the mattersconsidered in the previous section.
A: Nature, content, purpose of the document/ B: Confidentiality obligation / C: Distribution of
the document and authority to access database /D: Requirements for participating in a committee,
etc. / E: Date of publication
3z

Examination Guidelines for Patent andUtility Model in Japan
We consider the issue of determining
whether a “standard development document”
falls under a “distributed publication” or has been
“made publicly available through an electric
telecommunication line” as prescribed in Article
29, paragraph (1), item (iii) of the Patent Act
while referring to parts in the Examination
Guidelines for Patent and Utility Model in Japanthat are considered to be related to the issue.
“Distributed publication”
In consideration of the Examination
Guidelines, Part II, Chapter 2, 1.2.4, in order for a
document to fall under a distributed publication,
it is important that a reproduction of the
document becomes available for inspection byunspecified persons, and the fact of actual
inspection is not required. This point is
mentioned in the two judicial precedents of the

IIP Bulletin 2015 Vol.24

Consideration of an example case
The JPO receives the provision of DIS anddocuments thereafter (including FDIS and IS)
from the ISO. These documents are consideredbelow. The status of the documents is shown
below with respect to each of the five items to beconsidered, and the way of making adetermination is considered.
A: Nature and content of the documents[Status]: The sale of the documents incountries is permitted by the ISO.
[Determination]: Based on the fact of
permission for the sale of the documents, it ispossible to determine that the documents aresupposed to be published. As there is no
condition set on the sale of the documents, they
can be obtained by unspecified persons.
Therefore, the documents are considered to be in
the state of being available for inspection byunspecified persons.

● 40 ●

B: Confidentiality obligation[Status]: As the sale of the documents ispermitted without any limitation, there is neither
explicit nor implicit confidentiality obligation.
[Determination]: As the documents are soldfor a price, it is presumed that their unnecessary
distribution is not permitted. However, this pointis a copyright-related issue and is not related tothe confidentiality obligation. It is possible todetermine that there is neither explicit nor
implicit confidentiality obligation.
C: Distribution of the documents and authority toaccess database[Status]: The present status of developmentof standards by each TC is open to the public via
the “Standards catalogue” on the ISO's website.
Therefore, it is possible for unspecified persons
to know the status of DIS and documents
thereafter. In addition, as a result of confirming
dozens of DIS at the voting stage, all of themwere confirmed to be available for purchase. Not
only DIS but also some FDIS were confirmed tobe actually sold and be available for purchase. In
addition, it is obvious that IS are for sale.
Moreover, even if there are some DIS and
FDIS that are not for sale, they are also uploaded
to eCommittees through the Central Office andare referred to each country. Information aboutsuch documents is notified to responsible
domestic deliberative bodies in each country. The
domestic deliberative bodies can download the
documents that require an ID and password fromeCommittees, and the documents are delivered tothe members necessary for deliberation. The
members share information with necessary
persons concerned at the companies or bodies towhich they belong.
[Determination]: It is clear that documents
on sale are in the state of being available forinspection by unspecified persons. If there is adocument for which sale has been permitted but
has yet to be sold, such document is also
disclosed to many experts in each country who
are outside a specific committee. Many persons,though they are experts in a specific field,
participate in a standards developing/settingorganization. Under such circumstances, it isconceivable to make it sufficient to consider“unspecified persons” who are taken into
consideration in making a determination
concerning Article 29, paragraph (1), item (iii) of
the Patent Act not to be “unspecified generalpersons” but to be “unspecified persons” in therelevant field. The grounds for this idea are as

follows.
(1) In the case of a document of an international
standards developing/setting organization, thepurpose of its disclosure is to disseminate thedocument.
(2) Committee members are persons who belong
to companies, and individuals cannot becomesuch members. Therefore, it can be said thatthe document is distributed not to“unspecified general persons” but to“unspecified persons who belong tocompanies.”
Moreover, even “unspecified general persons”
can confirm the state of a document having comeinto the state of being subject to voting as a DIS;
therefore, such a document that has yet to be soldmay be put on sale as a result of such person's
wish for the sale of the document. Consequently,
it may be possible to say that such documents arealso in the state of being available for“unspecified general persons.”
D: Requirements for participating in a committee,
etc.
[Status]:Ifacommittee
requires,intellectuals (university professors, etc.) in therelevant field, other than the committee members
and the members of other bodies, also attend ameeting of the committee. Basically, the regularmembers (companies) of a domestic deliberative
body are entitled to be members of a national
committee. There are no special conditions forbecoming a regular member of a domestic
deliberative body of the ISO, and any company
can sometimes become a member if it has theability to pay membership fees. Moreover, there
are bodies that make it a condition for becoming a
regular member to run a business and those that
impose loose conditions, such as having a certain
degree of ability to formulate standards.
Regarding the domestic deliberative bodies of
SCs that deal with DIS and FDIS obtained by the
JPO, there are no special requirements forbecoming a member thereof other than therequirements of “being a company” and “having
the ability to pay membership fees.”[Determination]: DIS and documents
thereafter are documents that are referred to by
those outside the committee (referred to all ISO
Members). Therefore, the requirements forparticipating in a committee and those forbecoming a member of a committee can beconsidered to be outside this question.

● 41 ●IIP Bulletin 2015 Vol.24

E: Date of publication
Two kinds of dates are regarded as the dateof publication. One is the date on which the saleof a document actually started, while another isthe date on which the document was uploaded toeCommittees.
[Determination]: If it is possible to deem
“many experts in each country” to be“unspecified
persons”
in
terms
of
a
determination concerning Item C, it is possible toconsider the date on which a document is
uploaded to eCommittees as the date of
publication. This is because a deliberative body ineach country becomes able to download the
document with an ID and password and to
distribute it to persons concerned in the
deliberation at the time when the document is
uploaded to eCommittees. Even in the casewhere a DIS or document thereafter isdetermined to be a distributed publication basedon the fact that its sale is permitted, it is possible
to consider the date on which the document was
uploaded to eCommittees as the date of
publication.
[Comprehensive determination]
As mentioned in Items A and B, DIS anddocuments thereafter are issued on the premiseof their sale to the general public by the ISO
itself or permission of their sale to the generalpublic in each country. Therefore, it is obviousthat the documents are those that werereproduced for the purpose of publication to the
public through distribution, that is, a“publication.” Documents that have been “onsale,” including those that have yet to be sold, areconsidered to be put into the “state of being
available for inspection by unspecified persons.”
Therefore, they are recognized as having been
“distributed.” Consequently, it is obvious thatsuch documents satisfy the requirement
prescribed in Article 29, paragraph (1), item (iii)of the Patent Act.
Regarding DIS and documents thereafter, we
confirmed the fact that all of the dozens ofsamples of such documents are sold. Here, we try
to consider documents for which sale has been
permitted but which have yet to be handled as
being “for sale.” Such documents fall under“publications,” but it is difficult to determine
whether they are “distributed” publications.
However, taking into account the fact that anyone
can confirm the status of such a document having
come to be subject to voting, the document canbe considered to be put into the “state of being

IIP Bulletin 2015 Vol.24

available for inspection by unspecified persons”
because there is the possibility that the document
will be sold as a result of an “unspecified
person's” wish for the sale of the document after
confirming the existence of the DIS.
Consequently, DIS and documents thereafter are
also considered to satisfy the requirement set
forth in said item as of the time of theirestablishment (as of the time of being referred to
all the ISO Members) even if they are nothandled as being “for sale.”In this manner, the fact of permission forsale alone is also considered to serve as a groundfor falling under said item, but even if not so, it isalso possible to consider that a document “wasmade publicly available through an electric
telecommunication line” at the stage where it
was uploaded to eCommittees because it
becomes accessible to “unspecified persons” atthat stage (here, it is the prerequisite that “manyexperts in each country” who can accesseCommittees are recognized as “unspecified
persons”).
On these grounds, it is considered that DIS
and documents thereafter of the ISO can be
determined to be documents that can be available
in relation to Article 29(1)(iii) of the Patent Act.
4

Applicationtoactualstandards
developing/setting organizations
In consideration of the actual conditions ofstandards developing/setting organizations, thestandards development documents of the ITU areconsidered to be relatively highly likely to be
worthy of being used in patent examinations. The
ITU Members (incidentally, the EPO is a memberof the ITU) can access various standards
development documents from a variety ofcommittees. The ITU is an internationalorganization, and its activities seem to beintended for dissemination of documents.
Therefore, the ITU imposes no special
confidentiality obligation. Consequently, the ITU
documents seem to have a high level of openness,
although they are disclosed only to the ITU
Members. In addition, the members are at thecorporation level, and individuals cannot becomea member. However, as there are no special
limitations on companies that can become amember, it is considered that “unspecified
persons who belong to a company” areconsidered to be the members. Just like theresult of discussions in relation to a
determination concerning Item C in Section 3,
the documents are considered to be highly likely● 42 ●

to fall under Article 29, paragraph (1), item (iii) of
the Patent Act.
5

Technical
fieldsandstandards
developing/setting organizations forwhich use of standards development
documents in patent examinations isdesired and standards development
documents of which use in patentexaminations is desired
Those interviewed in this research study
answered that it is the ICT-related field that
continues to be an important field for which it isdesired to use standards development documentsin patent examinations. They also answered that
the EPO is paying attention to the ICT field
because there will be increasing numbers ofcases in which ICT develops through connection
with other fields. They cited internationalorganizations as standards developing/settingorganizations for which use of standards
development documents in patent examinations
is desired because their standards development
documents are considered to have a high level of
openness. In addition, many of them answeredthat standards development documents that arehighly technically valued are the first proposal
documents, and therefore, such documents are
considered to be the most useful for patentexaminations.
6

Summary
The key point in considering the use of astandard development document in patentexaminations is to recognize that the standard
development document is put into the state ofbeing available for inspection by unspecified
persons or that unspecified persons can accessthe standard development document uploaded ona server. Various opinions were expressed on thispoint at the committee. A determination that is
considered to be the most reasonable at present
was described in the consideration of the example
case.

Ϯ Conclusion
Appropriate use of standards development
documents that are submitted in the process of
formulating technical standards in patentexaminations as prior art documents is
considered to contribute to maintaining andimproving the quality of patent examinations.
Therefore, in this research study, we collected
information,
etc.
about
the
document

management
policiesofstandards
developing/setting organizations in Japan andabroad and the handling of standards development
documents at overseas intellectual property
offices, and considered the use of standards
development documents in patent examinations
through discussions at a committee ofintellectuals.
z

Domestic judicial precedents
We surveyed and analyzed with the advice of
attorneys at law 50 judicial precedents
concerning lawsuits filed in Japan in relation towhether a prior art document is publicly known(Article 29, paragraph (1), items (i) and (iii) of the
Patent Act; in particular, item (iii)).
In making a determination concerning the
distributed publication as prescribed in Article 29,
paragraph (1), item (iii) of the Patent Act, theSupreme Court judgment of Reference No. N3
has been cited in multiple judicial precedents,
including the Supreme Court judgment ofReference No. N6, and it is considered to be astandard. According to the Supreme Court
judgment of Reference No. N3, in order for a
document to fall under a distributed publication,
it is important that a reproduction of the
document becomes available for inspection byunspecified persons, and the fact of actual
inspection is not required.
Seeing the tendency of the 50 judicial
precedents, the points taken into consideration in
making such a determination are organized into
the four perspectives, that is, “regarding thenature of the document,” “regarding theconfidentiality obligation and maintenance ofconfidentiality,” “regarding the nature of themeeting” and “regarding the date on which the
document became publicly known.”zIntellectual property office of each country
Considering the EPO's examination practicebased on the European Patent Convention and
the Guidelines for Examination in the European
Patent Office, the requirements for using astandard development document in patentexaminations are that there is no confidentiality
contract and that the document has been madeavailable to the public before the date of filing or
the date of priority concerning the document.
The EPO is considered to be receiving provisionof documents by making an arrangement witheach standards developing/setting organization toensure that it can use documents that satisfy the
aforementioned requirements. Although the● 43 ●IIP Bulletin 2015 Vol.24

method taken by the EPO is not necessarily
applicable to Japan without change, it can serve
as a useful reference.
z

Actualconditionsofstandards
developing/setting organizations
It is the mainstream handling that only themembers of a relevant committee are permitted
to access a standard development document thatis discussed at a meeting of the committee at thestage of preparing the draft standard and thatsuch standard development document is
distributed only to such members. Access to theserver of a standards developing/settingorganization is managed by IDs and passwords
assigned to the members of a committee of thestandards developing/setting organization.
Regarding the confidentiality obligation,
there are clear provisions thereon at forum-basedorganizations. For some of such organizations,compliance with the confidentiality obligation is
included in a contract that is concluded when one
becomes a member of the organization. It is theactual situation at de jure organizations thatcompliance with the confidentiality obligation isleft to the common-sense determination of eachmember of a committee.
zActual conditions and opinions of domestic
companies
It is fundamental that each company
completes the filing of a patent application for an
invention for which a patent application should be
filed before the submission of a contribution, etc.
Within the scope of the interviews this time, it
seems that the cases in which the right fortechnology disclosed in standards development
activities was unintentionally obtained by anotherperson have not become obvious as a major issue.
On the other hand, there was no opinion thatclearly denies the use of standards development
documents in patent examinations. The ICTrelated field was cited as a field in which the useof standards development documents in patentexaminations is expected, although the industriesof the interviewed companies were also cited assuch. Moreover, there was also an opinion that itis desirable to use, in particular, the proposal
documents of international organizations.
zConsideration of the use of standards
development
documentsinpatentexaminations
It is ideal that not only standards
development documents but also publicly known

IIP Bulletin 2015 Vol.24

documents whose content is useful for
examinations are organized as examinationmaterials to ensure the environment in which
examiners can use them in patent examinations.
Although information collected through theinterviews, etc. this time is within the limited
scope, there was no clear objection to the use ofstandards development documents in patentexaminations, and it was confirmed that such use
is also basically supported by users.
Here, in actually carrying forward theorganizationofstandards
development
documents as examination materials, it isnecessary to determine whether a standard
development
document
falls
under
the
“distributed publication” or has been “madepublicly
available
throughanelectric
telecommunication line” as prescribed in Article
29, paragraph (1), item (iii) of the Patent Act inorder to confirm that the standard development
document is publicly known. The key point ofdetermining whether a standard development
document
falls
under
the
“distributed
publication” is whether the standard development
document became available for inspection byunspecified persons through distribution at acommittee. In addition, the key point ofdetermining whether a standard development
document has been “made publicly available
through an electric telecommunication line” iswhether information uploaded to the server of astandards developing/setting organization as thestandard development document can beconsidered to be accessible to unspecified
persons via the Internet. The following are citedas the items that should be taken into
consideration in making these determinations:“A: Nature, content and purpose of the
document,” “B: Confidentiality obligation,” “C:Distribution of the document and the authority toaccess database,” “D: Requirements forparticipating in a committee, etc.” and “E: Dateof publication.”
As a specific example, this research study
committee considered the question of whether
DIS and documents thereafter that are provided
to the JPO by the ISO, which are standards
development documents already obtained by the
JPO, are publicly known. The result of thisconsideration led to the conclusion that ISO's DIS
and documents thereafter can be considered to be
distributed publications and that they can be usedas prior art documents when giving a notice of
reasons for refusal under Article 29, paragraph(1), item (iii) of the Patent Act in patent● 44 ●

examination. Moreover, considering the questionof whether other standards development
documents are publicly known in light of the
discussions held and the opinions expressed at
this research study committee, for example,
ITU's standards development documents are
considered to be highly likely to satisfy therequirement that an invention becomes publicly
known through publication, etc., as prescribed insaid item.
We hope that discussions are continuously
held on the use of standards development
documents in patent examinations by using thisresearch study as one step and such use is
thereby promoted.
(Senior Researcher: Schuich TAMURA)㸯

Cooperation between Patent Offices and Standards
Developing Organizations, National Academies of
Science, National Academies Project on Intellectual
Property Management in Standard-Setting Processes:
An International Comparison PGA-STEP-10-05 preparedby George T. Willingmyre, P.E., September 23, 2012.
http://sites.nationalacademies.org/cs/groups/pgasite/do
cuments/webpage/pga_072350.pdf● 45 ●IIP Bulletin 2015 Vol.24