Patent Act Article 29-2: Expanded Prior Application
1. Overview
In Japan, when multiple applications are filed for the same invention, only the earliest application can be granted a patent, as the country adopts the first-to-file principle (Article 39). This provision of Article 39 applies only to the scope of the claims. Therefore, regarding an invention described in the specification, etc. of the earliest application (which is not mentioned in the claims), the provisions of Article 39 do not apply.
Furthermore, considering the provisions on novelty (Article 29), after the publication of the earliest application, a subsequent application is rejected because it lacks novelty (Article 29). However, for an application filed after the prior application but before the publication of the prior application, neither Article 39 nor Article 29(1) applies. Patent Act Article 29-2 states that such an invention cannot be patented from the perspectives of (i) the purpose of the Patent Act to grant patent rights in exchange for the disclosure of a new invention, (ii) streamlining of examination, and (iii) suppression of defensive filings.
2. Specific Points
2.1. Differences from Patent Act Article 39
The provisions of Article 29-2 are established for the purpose of the Patent Act to grant patent rights in exchange for the disclosure of a new invention and for the streamlining of examination. On the other hand, the provisions of Article 39 are established to prevent double patenting (excluding duplicate patents) and to prevent the substantial extension of the patent term. Article 29-2 does not apply to applications filed on the same day, but Article 39 does apply to applications filed on the same day. Also, while Article 29-2 can exclude subsequent applications based on inventions described not only in the claims but also in the specification and drawings, Article 39 can only exclude subsequent applications based on inventions described in the claims of the prior application.
2.2. Determination of Filing Date
(i) In cases involving a claim of priority, the priority date is used, (ii) For divisional applications and converted applications, the earlier filing date is used as the basis; however, when excluding a subsequent application as a prior application, the actual filing date is used as the basis.
2.3. Inventions Described in the Specification, etc.
An invention described in the specification, etc. refers to an invention grasped from (i) matters described in the specification, etc., and (ii) matters equivalent to those described. Matters equivalent to those described refer to those that can be derived from the described matters by taking into account the common general knowledge at the time of filing.
Then, when the "invention described in the specification, etc." of the prior application and the invention pertaining to the claims of the subsequent application are identical, Patent Act Article 29-2 is applied.
Regarding the "identity" between the invention of the present application and the cited invention, there is no definition in the Patent Act, but there is an explanation in the Examination Guidelines.
3.2 Judgment on whether the invention pertaining to the claims of the present application and the cited invention are identical
As a result of comparing the invention pertaining to the claims of the present application with the cited invention, the examiner shall judge both to be "identical" as referred to in this chapter in the following cases (i) or (ii).
(i) When there are no differences between the invention pertaining to the claims of the present application and the cited invention
(ii) Even if there are differences between the invention pertaining to the claims of the present application and the cited invention, when both are substantially identical Substantially identical here refers to a case where the difference between the invention pertaining to the claims of the present application and the cited invention is a minor difference in the concrete means for solving the problem (addition, deletion, conversion, etc. of well-known or commonly used art that does not produce a new effect).
If there are no differences, they are certainly identical.
The issue arises when there are differences but they are substantially identical.
This case of being substantially identical is,
"a case where the difference between the invention pertaining to the claims of the present application and the cited invention is a minor difference in the concrete means for solving the problem (addition, deletion, conversion, etc. of well-known or commonly used art that does not produce a new effect)"
case.
A minor difference refers to a case where, although there is a difference, it is only the addition of widely distributed parts, etc., and there is no new effect.
Of course, if there is a "difference," that difference may sometimes be the cause of a major discrepancy from the cited invention. If the examiner has overlooked this major discrepancy, it is possible to argue against it in a written opinion.
For example, it is thought that one would argue in a manner such as, 'The examiner identifies the difference as XX as a minor difference, but this difference is not a minor difference for the reason of □□. Therefore, the invention according to the claims of the present application and the cited invention are not substantially identical.'
2.3.1. Identity of Inventions
As one of the conditions for the application of Article 29-2 of the Patent Act,
Identity with the invention, etc., described in the specification, etc., initially attached to the application
exists.
Regarding this 'identity with the invention, etc., described in the specification, etc., initially attached to the application,' judicial precedent (Tokyo High Court Judgment, July 1, 2003 (2002 (Gyo-Ke) No. 3)) states,
'Matters described in the specification or drawings initially attached to the application' should be limited to matters that are actually described in the specification or drawings initially attached to the application, or, even if not described, matters that are self-evident from what is actually described. Furthermore, in order for a matter to be self-evident from what is actually described, it must be a matter that, even if not actually described, any person skilled in the art who comes into contact with what is actually described would understand as if that matter were described therein; a matter that can be easily understood if one receives an explanation about it cannot be said to be self-evident.
The points are:
1. It must be a matter that any person skilled in the art would understand as if that matter were described therein;
2. It is not self-evident if it is merely to the extent that it can be easily understood if one receives an explanation about it.
.
A statement with the same purport as this judicial precedent is also found in PCT International Search and Preliminary Examination Guidelines (effective July 1, 2020) (Japanese provisional translation) 20.12.
Specifically, in PCT International Search and Preliminary Examination Guidelines 20.12, it is stated that:
1. An amendment that introduces information not explicitly present in the initial application and which cannot be said to have been inherently present in the initial application is judged to be an amendment that adds subject matter exceeding the content of the initial application;
2. 'Inherently present' means a case where, although there is no explicit description, the meaning of the missing matter is necessarily clear to a person skilled in the art who comes into contact with the initial disclosure, and it is not sufficient that it merely seems to be that meaning.
20.12 An amendment should be regarded as introducing subject matter which extends beyond the content of the application as filed, and therefore unacceptable, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information, which was not expressly or inherently presented in the application as filed even when taking into account matter which is implicit to a person skilled in the art in what has been expressly mentioned. The term “inherently” requires that the missing descriptive matter is necessarily present in the disclosure, and that it would be recognized by persons of ordinary skill. Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.
20.12 (Regardless of whether it is by addition, alteration, or deletion) If the overall change in the content of the application due to an amendment results in information that was not explicitly present in the initial application and cannot be said to have been inherently present in the initial application even after considering matters that are self-evident to a person skilled in the art from the explicitly described matters, such an amendment introduces subject matter that exceeds the disclosure content at the time of filing and is not permitted. The term 'inherently' requires that the missing descriptive matter is necessarily present in the disclosure and that it is recognized as such by a person skilled in the art. Inherency cannot be established solely by probability or possibility. It is insufficient that a certain matter may merely occur in a certain situation.
According to the goo Japanese Dictionary, 'self-evident' (jimei) is defined as:
[Noun/Adjectival verb] Being clear without the need for special proof, etc. Being obvious. Also, that state. 'A self-evident truth', 'The election result is self-evident'.
is stated.
2.4. Reason for exclusion of application when the applicant is the same
This is to allow the person to receive a patent if they file an application themselves when they wish to later file a separate application and obtain a patent right for a specific technology described in the detailed description column to explain the invention described in the claims.
2.5. Reason for exclusion of application when the inventor is the same
This is to prevent the inventor, A, from having their own invention, A, rejected when they later file an application for it, in a case where B, having seen invention A made by A, makes a related invention B and files an application for it as the claims, and describes A's invention A in the specification to explain their own invention B.
2.6. Reason for determining the identity of the applicant at the time of the subsequent application
In Patent Act Article 29-2, the time for determining the identity of the applicant is the filing date of the later application (Patent Act Article 29-2, proviso). On the other hand, in Design Act Article 3-2, the time for determining the identity of the applicant is the time of examination or trial decision for the later application (Design Act Article 3-2, proviso).
The principle is that the time for determining whether a ground for rejection under Patent Act Article 29-2 or similar exists is at the time of the examiner's decision or trial decision. However, since the Patent Act has introduced a system for requesting examination, the scope of claims of the prior application is not finalized until the request for examination is made and the examination/trial is concluded. For this reason, it is anticipated that the examination of the later application will be delayed. Therefore, in Patent Act Article 29-2, by granting prior art status to the initial specification, etc., which is the maximum extent to which the scope of claims can be increased or decreased, the later application can be processed without waiting for the processing of the prior application.
Note that the time for determining the identity of the applicant in Patent Act Article 29-2 is the time of filing of the later application, and not the filing date of the later application. The reason for this is unclear, but I imagine it is because examinations used to be conducted with paper documents, so it was done to simplify the examination.
2.7. Others
The expanded prior art status for foreign language written applications is granted to the foreign language document (Article 29-2, parenthetical clause).
If a later application patent right is registered before the publication of the prior application, a ground for invalidation under Article 29-2 arises upon the publication of the prior application.
For foreign language patent applications and foreign language utility model registration applications, those deemed withdrawn due to failure to submit a translation within the domestic document submission period or the special period for translation submission (Article 184-4(3), Utility Model Act Article 48-4(3)) do not have expanded prior art status (Article 184-13).
3. About study methods
It might be easier to understand the provisions of Patent Act Article 29-2 if you review them together with the publication of applications and the right to claim compensation, which were introduced in the 1970 amendment.
・Patent Act Article 29-2
Article 29-2: Where an invention claimed in a patent application is identical to an invention or device described in the specification, scope of claims, or drawings (in the case of a foreign language written application under Article 36-2(2), the foreign language document under Article 36-2(1)) originally attached to the request of another patent application or utility model registration application that was filed prior to the date of the patent application and for which the patent gazette (hereinafter referred to as "patent gazette") containing the matters listed in each item of Article 66(3) was issued or the application was published after the filing of the patent application, or for which the utility model gazette (hereinafter referred to as "utility model gazette") containing the matters listed in each item of Article 14(3) of the Utility Model Act (Act No. 123 of 1959) was issued (excluding cases where the person who made the invention or device is the same as the inventor of the invention claimed in the patent application), the invention shall not be granted a patent, notwithstanding the provisions of Article 29(1). Provided, however, that this shall not apply where the applicant of the patent application and the applicant of the other patent application or utility model registration application are the same person at the time of filing of the patent application.
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