The Intellectual Property High Court ruling (2019 (Gyo-Ke) 10132) showed the effect of and the requirements for Paris priority for an invention including new matter not included in a basic application (so-called “partial priority”). We will introduce this ruling to you because this serves as a useful reference showing a specific method of judgment on partial priority.
Priority under the Paris Convention
As reproduced below, Article 4A(1) of the Paris Convention stipulates that an applicant in one of the countries of the Union under the Paris Convention shall enjoy a right of priority during a specific period of time.
In this newsletter, the right of priority stipulated in Article 4A(1) is referred to as “Paris priority”, a first application serving as a basis for claiming Paris priority is referred to as a “basic application”, and a later application claiming Paris priority is referred to as an “application claiming priority”.
Article 4B stipulates the effect of Paris priority claim. According to Article 4B, an application claiming priority filed during the priority period shall not be invalidated by any acts accomplished during the priority period, such as another filing or publication of the invention.
Article 4F stipulates that so-called multiple priorities and partial priority shall be approved.
A.
(1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.
B.
Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union.
F.
No country of the Union may refuse a priority or a patent application on the ground that the applicant claims multiple priorities, even if they originate in different countries, or on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed, provided that, in both cases, there is unity of invention within the meaning of the law of the country.
With respect to the elements not included in the application or applications whose priority is claimed, the filing of the subsequent application shall give rise to a right of priority under ordinary conditions.
Interpretation of Paris Priority by JPO
In the JPO’s Examination Guidelines for Patent and Utility Model (hereinafter also referred to simply as “Examination Guidelines”), Paris priority is explained as “the right to receive the same treatment as that on the date when the patent application was filed in the first country, in determination of novelty, inventive step, etc. for a patent application filed in another country of the Union”. In other words, the effect of Paris priority claim is interpreted as being retroactive in terms of specific requirements for patentability, such as novelty, inventive step, etc.
Moreover, the Examination Guidelines states that, in a case where a part that goes beyond the scope disclosed in the basic application is included in the claimed invention of the application claiming priority, the effect of Paris priority claim shall not be approved for the part concerned. To put it the other way around, even in a case where a part that goes beyond the scope disclosed in the basic application is included in the claimed invention of the application claiming priority, the effect of Paris priority claim can be interpreted as approvable for a part within the scope disclosed in the basic application.
Effect of partial priority shown in IP High Court ruling
(2019 (Gyo-Ke) 10132)
Contested in this court case was whether the right of Paris priority shall be enjoyed for an invention including elements not included in the basic application.
(1) History
The history of the application according to the present patent is as follows:
| (i) November 5, 2010 |
U.S. provisional application was filed (US61410399) |
| (ii) June 23, 2011 |
PCT application claiming priority of the U.S. provisional application was filed (PCT/US2011/041553) |
| (iii) April 23, 2013 |
The PCT application entered into Japanese national phase (JP2013-054458, Patent No. 5514962) |
| (iv) January 29, 2014 |
Divisional application based on the JP national phase application was filed (JP2014-111160, Patent No. 5575340) |
The Present Patent Invention was disclosed as an invention (Elements A+C) broader than the invention (Element A) disclosed in the application documents of the U.S. provisional application.
It is to be noted that “
Exhibit Ko 1 moving image” was posted on March 29, 2011, which was after filing of the U.S. provisional application and before filing of the PCT application.
(2) Disclosure of the Present Patent Invention (summary)
The Present Patent Invention relates to a device, a kit, and a method for making Brunnian Link (a link formed of a doubled and closed loop on itself so as to catch another closed loop in order to form a chain).
Form of Brunnian Link (FIG. 2 according to the Present Patent Invention)
Kit for making Brunnian Link (FIG. 1 according to the Present Patent Invention)
12: Base
14: Pin bar
26: Pin
Here, we reproduce below the link to “Exhibit Ko 1 moving image”. Reference to “Exhibit Ko 1 moving image” would make it easier to understand the device, the kit, and the method for making Brunnian Link of the Present Patent Invention.
(3) Plaintiff asserted as follows:
The Present Patent Invention includes a structure not in the U.S. provisional application in four points; that is, [i] the pin includes the structure having a plurality of grooves; [ii] the structure in which the pin bar and the base are integrally molded is included; [iii] the structure of such a method that the pin bar is fitted not in the groove of the base but in a projecting portion on the base is included; and [iv] the structure in which the pin has not a groove but a gap penetrating the pin is included, and thus, the Paris priority was denied, and as a result, the Present Patent Invention lacks novelty and inventive step in relation with the “Exhibit Ko 1 moving image” and should be invalidated.
Our Comments
Regarding Point [i]
In the Present Patent Invention, the structure of the pin was recited such that “the opening portion is an access groove disposed along at least one side of each of the plurality of pins”; however, the recitation “at least one” is not included in the U.S. provisional application.
Regarding Point [ii]
With regard to the recitation “a plurality of pins supported on the base” in Claim 1 of the present patent, the patentee argued that “a structure in which the pin bar and the base are integrally molded is also included” in the process of examination and appeal examination.
On the other hand, the U.S. provisional application only disclosed a structure in which the pin bar is attached to the base.
: The structure disclosed in the U.S. provisional application
Regarding Point [iii]
The method of fitting the pin bar in the projection portion on the base was not disclosed in the U.S. provisional application, but was added when filing the PCT application.
: FIG. 5A as filed in the PCT application (FIG.5A of the present patent application)
Regarding Point [iv]
In the U.S. provisional application, the portion was recited as an “access groove”; however, in the Present Patent Invention, the wording “opening portion” was used, and thus, the gap penetrating the pin became considered to be conceptionally included as an access groove.
(3) In this regard, the court held as follows: (underlined by us)
However, in view of the wording in claims, it is obvious that the Present Patent Invention includes the structure not including the points [i] to [iv] asserted by Plaintiff as new structure; that is, includes the structure as in the Example described in the description of the present U.S. provisional application (it is considered that Plaintiff does not deny this point, either.). But this structure constitutes one integrated and completed invention, and it is not such that the invention is completed only after the structures in [i] to [iv] are added. In such a case, according to Article 4F of the Paris Convention, the priority cannot be denied or the patent application cannot be refused on the ground that the patent application made by claiming the Paris priority includes the constituent portion not included in the application on which the priority is based, but the Paris priority is denied only for the constituent portion not included in the application to be the basis. Thus, in order for the patent according to the patent application to be invalidated, not only is the patent found to include the constituent portion not included in the application on which the Paris priority is based, but the constituent portion should need to be found to lack novelty or inventive step in view of the Cited Invention.
The court further held as follows:
For example, if a patentee filed a foreign application for the invention with the structure of A and then claimed Paris priority in our country after the invention B including that structure A became publicly known and filed a patent application for the invention including the structures A + C; that is, the invention combining the structure A and the structure C that is not included in the foreign application but for which novelty and inventive step are found over the invention B, although its foreign application regarding the structure A preceded the invention B, the priority was claimed, and the structure C is found to have novelty and inventive step over the invention B, the priority is denied even for the structure A only on the ground that the structure C not included in the foreign application is included, and the patent application is refused as a conclusion. But such conclusion cannot be allowed under Article 4F of the Paris Convention at all.
Moreover, it was held that the structures of [i] to [iv] can also become independent constituent portions of the invention, respectively, and thus, the novelty and inventive step for the Cited Invention need to be examined separately for each structure. Furthermore, it was held that, as for the structures of [1], [2], and [4], which are not included in the tool according to “Exhibit Ko 1 moving image”, there is no room that the novelty matters, and there is no assertion/verification (by the Plaintiff side) enough to find that these structures lack inventive step over the invention according to “Exhibit Ko 1 moving image”, and thus, “Exhibit Ko 1 moving image” should not be a proof for invalidation even without determining whether the structures of [1], [2], and [4] are structures not included in the U.S. provisional application.
Although the structure of [3] was determined to be disclosed in “Exhibit Ko 1 moving image”, the structure of [3] was determined not to be considered to be a structure not included in the basic application, and the assertion by the Plaintiff was denied. Specifically, the ruling was as follows:
“The U.S. provisional application documents describe only the mode in which the pin bar is fitted in the groove provided in the base, but this is only the recitation of the Example, and even if the entire U.S. provisional application documents are examined, it cannot be understood to describe that the mode of fixing the pin bar to the base is limited to the structure according to this Example. And the structure of the mode in which the recess portion is provided in the base and the pin bar is fitted in the recess portion (the structure in the U.S. provisional application), and the structure of the mode in which the projecting portion is provided on the base and the pin bar is fitted in this projecting portion (the structure of [iii]) are exactly in the opposite relation, and it is common general technical knowledge that if one is conceived of, the other is naturally conceived of. Thus, even if there is no explicit recitation, the structure of [iii] should be considered to be included within the assumption of the recitation.
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Edited by Hiroko Iwatsuki
