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Priority Under the Paris Convention(PDF:128KB) (Draft) Part V Chapter 1 Priority under the Paris Convention Chapter 1 Priority under the Paris Convention 1. Overview The priority under the Paris Convention is the right of a person who has filed a patent application in one of the member countries of the Paris Convention (the first country) to receive the same treatment as that at the date when the patent application was filed in the first country (hereinafter referred to as "priority date") in determination of novelty, inventive step, etc. for patent applications in another member country of the Paris Convention (the second country) regarding the content described in the filing documents of the first patent application. Where patent applications etc. are filed in multiple countries for the same invention, simultaneous filing of patent applications etc. places a great burden on an applicant because preparation of translation etc. or different procedures for each country are required. To reduce the burden of an applicant, the Paris Convention provides a system of the priority (Paris Convention Article 4(A) to (I)). The Patent Act Article 43 also prescribes the procedures in Japan for claiming the priority based on the Paris Convention. In this Chapter, the application filed in Japan as the "second country" is sometimes and simply referred to as an "application in Japan". 2. Requirements and Effects of Priority Claim under the Paris Convention 2.1 Person who can claim the priority under the Paris Convention A person who can claim priority under the Paris Convention shall be the national of one of the member countries of the Paris Convention (including a person who is recognized as the national of one of the member countries by the provision of Paris Convention Article 3) and who has regularly filed a patent application to one of the member countries of the Paris Convention or his/her successor (Paris Convention Article 4A (1)). A person who assigns his/her right to obtain a patent to others and has not filed the patent application in the first county by himself/herself may file the regular patent application in the second country, but he/she may not claim priority under Paris Convention based on the patent application assigned to others. - 1 - (Draft) Part V Chapter 1 Priority under the Paris Convention 2.2 Period when the application in Japan with a claim of priority under the Paris Convention can be filed The period when the application in Japan with a claim of priority under the Paris Convention can be filed (the period of priority) shall be 12 months from the priority date (Paris Convention Article 4C(1) and (2)). 2.3 Application that can serve as a basis of priority claim under the Paris Convention 2.3.1 That the application is a regular national application The application that can serve as a basis of priority claim under the Paris Convention is limited to a regular national application filed in one of the member countries of the Paris Convention. 2.3.2 That the application is a first application The application that can serve as a basis of priority claim under the Paris Convention is limited to a first application in one of the member countries of the Paris Convention (Paris Convention Articles 4C(2) and(4)). This is because the period of priority would be substantively extended if the right of priority were recognized as a basis of subsequent applications again (that means cumulatively) for the invention disclosed in the first application. 2.4 Effects of priority claim under the Paris Convention Any subsequent application shall not be invalidated by reason of any acts accomplished in the period from the priority date to the date of filing in Japan, in particular, (1) another filing, (ii) the publication or exploitation of the invention and (iii) other acts. Moreover such acts cannot give rise to any third-party right (Paris Convention Article 4B). Since the priority under the Paris Convention has such effects, where the effect is recognized, the priority date shall be treated as a date to be determined as reference (hereinafter, referred to as a "reference date" in this chapter) in applying the following provisions (i) to (iv) of the Patent Act in connection with substantive examination. (i) Novelty (Article 29(1)) - 2 - (Draft) Part V Chapter 1 Priority under the Paris Convention (ii) Inventive step (Article 29 (2) (iii) Enlarged prior application (Main body of Article 29(2)) (iv) Priority application (Articles 39(1) to (4)) (v) Requirements for independent patentability concerning (i) to (iv) in the above (Article 126(7) applied as mutatis mutandis under Article 17-2(6) However, in application of the provisions of the other clauses in connection with substantive examination (for example, Articles 32 and 36) on the patent application claiming priority under the Paris Convention, determination shall be made, based on the date of filing of the patent application concerned. In the case of applying the provisions of 29bis as the other application prescribed in the clause concerning on the patent application claiming priority under the Paris Convention, see "Part III, Chapter 3, 6.1.2 Enlarged prior application". 3. Determination on Effects of Priority Claim under the Paris Convention 3.1 Basic idea 3.1.1 A case requiring determination of the effect of the priority claim under the Paris Convention It is sufficient that the examiner determines whether or not the effect of the priority claim is recognized, only where the prior art and the like which can be a basis of the reason for refusal are found between the filing date of the application filed in the first country on which the priority claim under the Paris Convention is based and the filing date of the application in Japan. This is because the determination of novelty, inventive step, and the like that will be changed by whether the effect of the priority claim under the Paris Convention is recognized is limited in the case where prior art and the like which can be cited in a Notice of reasons for refusal are found between the filing date of the application filed in the first country and the filing date of the application in Japan. The Examiner may make such a determination prior to searching the prior art, in the case where the determination on the effect of the priority claim under the Paris Convention is easily made. This is because the determination on the effects of the priority claim in advance of prior art search may sometimes contribute to effective examination due to restriction of the time range of prior art search. - 3 - (Draft) Part V Chapter 1 Priority under the Paris Convention 3.1.2 Subject to be determined The examiner shall determine the effect of the priority claim under the Paris Convention on a claim-by-claim basis in principle. Where invention-defining matters are expressed by alternatives in one claim, the examiner shall determine the effect of the priority claim under the Paris Convention for the invention that can be understood based each alternative. Furthermore, where a mode for carrying out the claimed invention is newly added, the effects of the priority claim under the Paris Convention shall be determined by each newly added part, and not the other portion thereof. 3.1.3 Comparison with the matter stated in the application documents as a whole relating to the first application and determination (1) Basic ides on the comparison Where the Description, the Claims and the Drawing of the application in Japan are presumed to fall in a matter of amending the first application (Note) and where the invention according to the claim of the application in Japan corresponds to the addition of new matter in relation to the "matters stated in the application documents as a whole in the first application" by the amendment, the effect of the priority claim of the Paris Convention cannot be recognized. That is, when this means that such an amendment shall introduce a new technical matter to the invention according to the claim in relation to the "matters stated in the application documents as a whole in the first application", the effect of claiming the priority is not permitted. Here, the "matters stated in the application document as a whole in the first application" mean technical matters which are derived by a person skilled in the art from comprehensively understanding the whole description in the application documents in the first application. (Note) The examiner shall take into account in that the first application shall be the "first application" (see the item 2.3.2). See the items 3.3, 5.4.1, and 5.4.2 as examples in which whether an application concerned is the "first application" was raised as an issue. (2) Typical cases where the claimed invention of the application in Japan is not considered to be within the scope of the matters stated in the application documents as a whole of the first application - 4 - (Draft) Part V Chapter 1 Priority under the Paris Convention a Where matters other than matters which are stated in the application documents as a whole of the first application are stated as matters specifying the claimed invention(hereinafter, referred to as “matters specifying invention”. Where the claimed invention of the application in Japan corresponds to the addition of new matter in relation to the matters stated in the application documents as a whole of the first application by stating matters specifying invention which are not stated in the application documents as a whole of the first application, the effect of the priority claim under the Paris Convention shall not be recognized.
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