(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 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 was filed in the first country (hereinafter referred to as "priority date") in determination of , 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.

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(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))

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(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 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.

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(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

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(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. For example, the following cases correspond thereto. (i) Where the structural element stated in the application documents of the first application are combined with a structural element which is newly added in the application in Japan to be the claimed invention (ii) Where a selection invention that selects the element of more specific concept from the invention of generic concept stated in the application documents of the first application is claimed in the application in Japan b Where a mode of carrying out is added or a part of the invention-defining matters is deleted, and the like

Where parts beyond the scope of the matters stated in the application documents as a whole of the first application are included in the claimed invention of the application in Japan by stating the matters that are not stated in the application documents as a whole of the first application (new modes for carrying out the invention etc.) or deleting the stated matters (partial deletion of the invention-defining matters etc.), the effects of priority claim under the Paris Convention cannot be recognized for the parts concerned.

Concerning the present cases, the following points are required to be taken into account.

(i) Where an invention recognized to be within the scope of the matters stated in the application documents as a whole of the first application among the invention according to one claim of the application in Japan is included in the claimed invention of the application in Japan, the effects of priority claim under the Paris Convention can be recognized for the parts concerned (see the item 3.2.1). (ii) Even where the effect of the priority claim under the Paris Convention is not

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(Draft) Part V Chapter 1 Priority under the Paris Convention partially recognized by adding the new modes of carrying out, if the claimed invention of the application in Japan does not go beyond the scope of the matters stated in the application documents as a whole of the first application by deleting the mode of carrying out in the amendment, the effect of the priority claim under the Paris Convention will be recognized.

Example: Where a part that goes beyond the scope of the matters stated in the application documents as a whole of the first application is included in the claimed invention of the application in Japan, as a result of adding a new mode of carrying out to the invention which can be carried out from the whole description of the application documents of the first application [The first Application]The claimed invention of the first application is a light scanning system providing mirror angle adjustability, and only the light scanning system adjusting the mirror angle by a screw is stated as a mode for carrying out the invention. [The application in Japan]Although the expression of the claimed invention of the application in Japan is the same light scanning system with mirror angle adjustability as that of the first application, a light scanning system that automatically adjusts the mirror with a piezoelectric element is newly added as a mode for carrying out the invention. (Determination of priority) In the claimed invention of the application in Japan, the effects of the priority claim on the part corresponding to the light scanning system that automatically adjusts the mirror with a piezoelectric element are not recognized and the effects of the priority claim are recognized only for the matters within the scope of the matters stated in the application documents as a whole of the first application. (Explanation) In the case of this example, the mode of carrying out the invention by automatically adjusting the mirror with a piezoelectric element is not stated in the application documents as a whole of the first application. By adding the mode of carrying out, the claimed invention of the application in Japan contains a matter which is newly added, in relation to the matter stated in the application documents as a whole of the first application. Therefore the effects of the priority claim are not recognized for the part added. c Where the claimed invention of the application in Japan can be firstly carried out in the application in Japan

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(Draft) Part V Chapter 1 Priority under the Paris Convention

Where an invention which could not be carried out by a person skilled in the art based on the whole description of the application documents of the first application can be carried out by adding a mode of carrying out or by depositing biological material and the like, the claimed invention of the application in Japan contains a matter which is newly added in relation to the matters stated in the application documents as a whole of the first application, therefore, the effect of the priority claim under the Paris Convention is not recognized,. Where the claimed invention of the application in Japan can be carried out by changing the technical common knowledge between the priority date and the filing date of the application in Japan, the same can be applied therefor.

3.2 Partial priority or multiple priorities

The application in Japan sometimes contains one or more elements that were not included in the first application. The Paris Convention recognizes the claim of priority for the elements included in the first application in this case (Paris Convention Article 4F. So-called "partial priority"). In addition, the priority under the Paris Convention can be claimed based on the multiple first applications (including the applications filed in two or more countries), respectively to file an application (Paris Convention Article 4F So-called "multiple priorities"). The multiple first applications include not only a case where multiple applications are filed in the same country, but also include a case where multiple applications are filed in two or more countries. In this case, the effects of the priority claim under the Paris Convention shall be determined according to 3.2.1 and 3.2.2.

3.2.1 Treatment of the partial priority (handling where the invention according to a part of claims or the invention according to a part of alternatives of the application in Japan is stated in the first application in filed in Japan)

The examiner shall determine whether or not the priority claim under the Paris Convention is present based on the corresponding first application for a portion stated in the first application among the invention according to a part of claims or the invention according to a part of alternatives of the application in Japan.

Example: Where a part of alternatives among the claimed invention of the application in

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(Draft) Part V Chapter 1 Priority under the Paris Convention Japan is stated in the application documents as a whole of the first application

[The first application] The claimed invention of the first application is the one containing the condition where the carbon number of an alcohol is 1 to 5, and only a mode of operation of a carbon number of alcohol of 1 to 5 is stated in the application documents as a whole. [The application in Japan] The claimed invention of the application in Japan contains the condition where the carbon number of alcohol is 1 to 10. [Determination of the priority] Since the invention regarding one claim of the application in Japan, with the condition where the carbon number of alcohol is 1 to 5, is stated in the application documents as a whole of the first application, the effects of priority claim are recognized. On the other hand, since the condition where the carbon number of alcohol is 6 to 10 corresponds to the addition of new matter in relation to the matters stated in the application documents as a whole of the first application, the effects of priority claim are not recognized.

3.2.2 Treatment of the multiple priorities (handling where the application in Japan has the priority claims under the Paris Convention based on the two or more first applications)

(1) Where the invention according to a part of claims or the invention according to a part of alternatives of the application in Japan is stated in the one of the first applications, and where the invention according to the other part of claims or the invention according to the other part of alternatives of the application in Japan is stated in the other first application. In this case, the examiner shall determine whether or not the effects of the priority claims under the Paris Convention are based on the corresponding first application on a claim-by-claim basis or an alternative-by-alternative basis.

Example: Where the matters stated in the multiple first applications are combined and stated in one claim of the application in Japan

[The first application]The condition where the carbon number of alcohol is 1 to 5 is stated in the application documents as a whole of the first application A, while the condition where the carbon number of alcohol is 6 to 10 is stated in the application documents as a whole of the first application B. [The application in Japan] The invention filed to Japan, claiming priority based on

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(Draft) Part V Chapter 1 Priority under the Paris Convention the first applications both A and B, contains (actual alternative).(Note)the condition where the carbon number of alcohol is 1 to 10 [Determination of the priority]Since the invention relating to the patent application in Japan has actual alternatives, determination shall be made for each alternative, and for the condition where the carbon number of alcohol is 1 to 5, the effects of priority claim based on the first application A are recognized. For the condition where the carbon number of alcohol is 6 to 10, the effects of priority claim based on the first application B are recognized. (Note: see “Section III, Chapter 2, paragraph 3 Procedure for Determining Novelty and Inventive Step”)

(2) Where the application in Japan claims the priority under the Paris Convention based on two or more first applications (multiple priorities), and invention-defining matters of the application in Japan are commonly stated in the first applications In this case, the examiner examines to consider the date of filing of the earliest application, that states the invention-defining matters of the invention, as the reference date (See the item 3.3, where the earliest application is not based on the priority claim under the Paris Convention).

Priority claim Priority claim

First application A First application B Application in Japan

Invention Inventions Inventions: Reference date

A1 A1 A1: d1

A2 A2: d2 A3: d3

Filing date d1 Filing date d2 Filing date d3 Figure 1 Reference date in the multiple priorities

(3) Where the claimed invention of the application in Japan claiming the priority under the Paris Convention based on two or more first applications is a combination of the matters stated in the application documents as a whole of the first applications, and the combination is not stated in either of the application documents as a whole of the first applications

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(Draft) Part V Chapter 1 Priority under the Paris Convention In this case, the effects of the priority claims based on either of the applications are not recognized.

Example: Where the claimed invention of the application in Japan is not stated in either of the first applications

[The first application] A "greenhouse equipped with a temperature sensor and shading curtain opening/shutting system that opens/shuts the shading curtain in response to the signals from the temperature sensor" is stated in the application documents as a whole of the first application A, and a "greenhouse equipped with a humidity sensor and ventilating window opening/shutting system that opens/shuts the ventilating window in response to the signals from the humidity sensor" is stated in the application documents as a whole of the other first application B. [The application in Japan] The claimed invention of the application in Japan claiming priority based on both of the first applications A and B concerns the "greenhouse equipped with a temperature sensor and ventilating window opening/shutting system that opens/shuts the ventilating window in response to the signals from the temperature sensor". [Determination of the priority]Since the greenhouse equipped with a temperature sensor and ventilating window opening/shutting system that opens/shuts the ventilating window in response to the signals from the temperature sensor is not stated in either of the application documents as a whole of the first application A or B, it corresponds new matter. Accordingly, the effects of priority claim based on either of the applications are not recognized.

3.3 Treatment of the cases where an application, that serves as a basis of the priority claim under the Paris Convention, claims a priority

Where the earlier application that served as the basis of the priority under the Paris Convention (the second application) claims the priority based on the application filed prior to the above application (the first application), for the parts which have already been stated in the application documents as a whole of the first application among the matter stated in the whole application documents of the second application, the effect of the priority claim cannot be recognized. This is because the second application cannot be "the first application" prescribed by the provision of the Paris

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(Draft) Part V Chapter 1 Priority under the Paris Convention Convention Section 4 C(2), for the parts stated in the application documents as a whole of the first application among the matters stated in the second application. Therefore, where the second application is based on the priority claim, the effect of the priority claim under the Paris Convention can be recognized only for the parts which are not stated in the application documents as a whole of the first application. See the item 3.2.2(2), where the priority right under the Paris Convention based on the first application is also claimed.

Priority claim Priority claim

First application Second application Application in Japan

Invention Inventions Inventions: Reference date ： A1 A1 A1 d3 A2 A2：d2

A3：d3

Filing date d1 Filing date d2

Filing date d3

Figure 2 Reference date in cumulatively claiming the priorities

4. Procedures of Examination in Determining on the Effect of the Priority Claim Under the Paris Convention

Where the reasons for refusal are raised because of not recognizing the effect of the priority claim under the Paris Convention, the examiner specifies the claim concerned and issues a statement of not recognizing the effect of the priority claim and its reason in the Notice of Reasons for Refusal. Where the reason for refusal for the claim is raised because of not recognizing the effect of the priority claim under the Paris

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(Draft) Part V Chapter 1 Priority under the Paris Convention Convention for a part of one claim, the examiner specifies the part and states a statement of not recognizing the effect of the priority claim and its reason. Where a written opinion in response to the Notice of Reasons for Refusal is submitted or an amendment of the Description, the Claims or the Drawing is made, the examiner re- determines whether or not the effect of the priority claim under the Paris Convention is present.

5. Treatment of Various Kinds of Applications and the Like

5.1 Division or conversion of the application claiming the priority under the Paris Convention

For divisional application claiming priority under the Paris Convention to Japan, the priority claimed at the original application is deemed to be claimed (Paris Convention Article 4G). This is because the statements or documents certifying the priority submitted with respect to the original application are deemed to have been submitted simultaneously to the Commissioner of the Patent Office with the new patent application (Patent Act Article 44 (4) and Patent Act Article 46 (5)). The converted application shall be applied the same.

5.2 Priority right prescribed in Patent Act Article 43-3 declared as governed by the Paris Convention

Any priorities (i) to (v) showing below are recognized to claim the priority as declared by the Paris Convention. (i) A case of the priority based on the application made by Japanese nationals or nationals of a member country of the Paris Convention (including nationals deemed to be the nationals of the member country in accordance with Paris Convention Article 3) in one of the member countries of the (WTO) (Patent Act Article 43-3(1)). (ii) A case of the priority based on the application made by the nationals of a member country of WTO in one of the member countries of the Paris Convention or WTO (Patent Act Article 43-3(1)). (iii) A case of the priority based on an application filed in a country made by a national wherein the country is neither a country of the member countries of the Paris Convention nor a member of the WTO and allows Japanese nationals to declare a priority under the same conditions as in Japan and is designated by the Commissioner of the Japan Patent Office (hereinafter, such a country is referred to as a "specific country" in this chapter) (Patent Act Article 43-3(2)).

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(Draft) Part V Chapter 1 Priority under the Paris Convention (iv) A case of the priority based on the application filed in the specific country by the Japanese national, a national of the member country of the Paris Convention or a national of a member of the WTO (Patent Act Article 43-3(2)). These applications claiming the priority shall be treated, as well as the cases of the applications in Japan claiming the priority under the Paris Convention, in accordance with the items 3 and 4.

5.3 International application based on the Patent Cooperation Treaty and its priority

Where Japan is included in the designated countries in the international application claiming the priority based on the national application to Japan (so-called "self designation"), the internal priority (the priority based on the application to Japan) can be claimed for the parts relating to designation of Japan (Patent Cooperation Treaty (PCT) Article 8 (2)(b)). On the other hand, in the international application claiming the priority based on the international application having designated Japan and other PCT contracting countries, the priority under the Paris Convention can be claimed with respect to the parts relating to designation of Japan when Japan is included in the designated countries (PCT Article 8 (2) (a)).

Earlier application as a Later application Priority that can be basis of the priority claiming the priority claimed claim International application including Japan as an National application Internal priority designated country (Self designation) Internal priority or the priority under the Paris International National application Convention (Selection by the application having applicant) designated Japan and International application other countries Priority under the Paris including Japan as an Convention designated country (For details, see the attached table)

5.4 Treatment of priority claim under the Paris Convention based on various kinds of applications

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(Draft) Part V Chapter 1 Priority under the Paris Convention 5.4.1 Treatment of the priority claim under the Paris Convention based on the divisional application or the converted application filed in the first country

Where the application in Japan is filed claiming priority under the Paris Convention based on a divisional or converted application filed in the first country, the divisional or converted application will not be the "first application" for matters stated in the application documents as a whole of the original application , among the matters stated in the application documents as a whole of the divisional application or the converted application. Therefore, where the priority is claimed based on both divisional or converted application and its original application under the Paris Convention, the examiner determines according to item 3.2.2(2).

5.4.2 Treatment of priority claim under the Paris Convention based on the continuation- in-part application in the US

What can be based on the priority claim under the Paris Convention is limited to only the first application filed in the member country of the Paris Convention ((Paris Convention Articles 4C(2)). Accordingly, where the application in Japan is filed claiming the priority under the Paris Convention based on a continuation-in-part (CIP) application in the US, the continuation-in-part application is not an application prescribed as the "first application," for the matters stated in the application documents as a whole of the original application among the matters stated in the application documents as a whole of the continuation-in-part (CIP) application in the US. Where the priority under the Paris Convention is claimed based on both of the continuation-in- part application and the original application, the examiner shall determine according to item 3.2.2(2).

5.4.3 Treatment of the priority claim under the Paris Convention based on the

Provisional application based on the system of provisional application or provisional specification in the US, UK, or Australia can serve as a basis of priority claim under the Paris Convention because it is considered to be a regular national application in the country concerned (Paris Convention Articles 4A(2) and (3)).

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