Overview of domestic priority
Domestic priority is the treatment of a later patent application based on the earlier patent application, and the matters described in the earlier application are the same as those made at the time of the earlier application regarding the treatment of inventive step, etc. It is a system to do (Patent Law Article 41).
If you meet the requirements for national priority claim, you may file a subsequent application with a national priority claim based on multiple earlier applications.
The types of use of the domestic priority system are as follows: (1) Example supplement type that supplements examples, (2) Apply each time an idea is obtained, and when a new idea (superordinate concept) is obtained, collectively There is a higher-level concept extraction type to be filed, and a unity-use type of inventions that are combined into one application when the ideas obtained in sequence satisfy the requirements of unity of inventions.
Actually, (1) I think that there are many examples replenishment type.
In addition, if there is an error and it cannot be corrected by amendment, or if you want to add an explanation or drawing, you can correct the error or add a description or drawing by using the domestic priority system. increase.
Requirements for domestic priority
(1) Independent requirements
The applicants of the earlier application and the later application must be the same (Patent Act Article 41, Paragraph 1).
The same applicant will be determined at the time of later application.
The effect of domestic priority can be obtained only when the applicant of the earlier application is Mr. A and the applicant of the later application is Mr. A.
If the applicant of the earlier application is Mr. A and the applicant of the later application is Mr. B, the effect of domestic priority cannot be obtained.
(2) Timing requirements
(1) The later application must be an application within one year from the earlier application (Patent Law, Article 41, Paragraph 1, Item 1).
(2) The earlier application is pending at the Japan Patent Office at the time of the later application (Patent Law, Article 41, Paragraph 1, Items 3 to 5).
Earlier application abandoned: If the earlier application has been withdrawn or rejected, or if the earlier application has been rejected or granted a patent, it is not possible to file a later application with a national priority claim.
(3) Object requirements
(1) The previous application is a patent application or a utility model registration application.
It is possible to apply for a patent with a domestic priority claim from a utility model registration application.
The utility model registration application is also included because the protection target is homogeneous.
Since the utility model registration application is registered within 2 to 3 months from the application, the period for filing a patent application with domestic priority is short.
A patent application with domestic priority cannot be filed from a design registration application or trademark registration application.
(2) The previous application is not a division / change application
This is the reason on the JPO side to avoid the complexity of examining the legality of divisions and changes.
Effect of domestic priority
Regarding the matters described in the specification of the earlier application, that is, the overlap between the earlier application and the later application, the judgment of novelty, inventive step, etc. shall be made on the filing date of the earlier application. It will be examined (Patent Law Article 41, Paragraph 2).
In other words, even if the same invention as the invention of the later application is published by a third party between the earlier application and the later application, the overlap between the earlier application and the later application is novelty. Since the judgment of inventive step is made on the filing date of the previous application, there is no violation of novelty or inventive step by the disclosure of this third party.
The matters described in the specification, etc. of the previous application are the matters described in the claims, specification, drawings of the previous application. Does not include abstracts.
If the requirements for national priority are not met, later applications will be determined for patent requirements such as novelty and inventive step based on the actual filing date.
When the domestic priority claim is not accepted (excerpt from the examination criteria)
Assuming that the specification, claims and drawings of the later application are amended for the earlier application, the amendment causes the invention according to the claim of the later application to be " In the case where new matters are added in relation to the "initial specification, etc. of the previous application", the effect of the claim of domestic priority is not recognized.
That is, if the amendment introduces new technical matters into the claimed invention in relation to "matters stated in the original specification, etc. of the earlier application", priority is given. The effect of the claim is not recognized.
Here, the "matters described in the initial specification, etc." are technical matters derived by a person skilled in the art by integrating all the descriptions in the initial specification, etc.
The previous application shall be deemed to have been withdrawn one year and three months after the filing date (Patent Act Article 42, Paragraph 1). This is to avoid duplicate screening and duplicate disclosure.
Withdrawal of domestic priority claim
Within one year and three months from the previous filing date, the domestic priority claim can be withdrawn (Patent Law Article 42, Paragraph 2).
If you want to be examined in the earlier application and the later application is accompanied by the domestic priority claim, the earlier application will be a withdrawal fiction, so it will be a system that can withdraw the domestic priority claim. I am.
In reality, the later application usually includes all the items described in the earlier application, so it is unlikely that the domestic priority claim will be withdrawn and the earlier application will be examined.
Judgment on Domestic Priority-"Artificial Nipple Case" (Retroactive Effect of Domestic Priority) Tokyo High Court Decision October 8, 2003
Issue
When a new example not described in the initial specification, etc. of the earlier application is added to the initial specification, etc. of the later application accompanied by the claim of domestic priority, the priority claim is added to this new embodiment. Is the effect (retroactive effect) recognized?
Conclusion
With the addition of new examples, the technical matters that are the gist of the invention described in the claims of the later application will exceed the scope of the technical matters described in the original specification etc. of the earlier application. In that case, the effect of the priority claim is not recognized for the excess part.
Judgment
Article 41 (2) of the Patent Act describes the effect of the priority claim relating to the application of Article 29-2 of the same law as "... the basis of the priority claim among the inventions relating to the patent application accompanied by the priority claim". Regarding the invention described in the specification or drawing ... first attached to the application for the previous application, the provisions of Article 29-2 text, ... A patent application shall be deemed to have been filed at the time of the earlier application. " It stipulates that the application of Article 29-2 should be retroactively limited.
Whether or not the invention relating to the later application can be said to be within the scope of the matters described in the initial specification of the earlier application is simply the wording of the claims of the later application and the initial specification of the earlier application. The technical matters that are the gist of the invention described in the claims of the later application and the technical matters described in the initial specification of the earlier application, etc., instead of comparing with the wording described in the above. Therefore, even if the wording of the claims of the later application can be said to be described in the original specification of the earlier application, the specification of the later application should be determined. In the detailed description of the invention of the above, by describing the technical matters which were not described in the original specification of the earlier application, etc., the technical matters which are the gist of the invention described in the claims of the later application. If the matter exceeds the scope of the technical matter stated in the initial specification of the earlier application, it should be said that the effect of the priority claim is not recognized for the excess.
Commentary
It feels plausible to read the sentence. However, as I will explain below, I think the conclusion is an unjustified decision.
In this case, because the example was added in the later application, the additional amount goes beyond the scope of the technical matters described in the original specification etc. of the earlier application, and the effect of priority is given. Was denied.
If the effect of priority is denied, the filing date of the later application will be the actual filing date of the later application.
In this case, the filing date of the later application is the actual filing date of the later application, so that the patent contains the same description as the example added between the earlier application and the later application. Due to the filing of the application, it was rejected under the provisions of Article 29-2 of the Patent Act.
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In this case, it is said that if the application after the priority claim is not filed, the earlier application can be examined, and it was not rejected under the provisions of Article 29-2 of the Patent Act. increase.
I feel that the conclusion is unjustified because the applicant will be disadvantaged because he claimed domestic priority.
In general, if you come up with an additional invention or example from the invention of the previous application, it is better to file an application with a domestic priority claim.
