Japón

Estados Unidos de América

Patentes (incluida la protección de variedades vegetales)

[Follow-up question from Japan] The US answer appears to apply only to a case where the claims of the two applications are found interfering and the first inventor is granted a patent right through the interfering proceeding. This does not apply to the case where application A with priority claim describes two inventions X and Y and claims only X, whereas application B filed between the priority date and actual date of the application A claims invention Y. The interference proceeding may not be declared and a patent right might be granted to both X and Y according to Hilmer rule. Please explain the consistency of such a practice with Article 4B of the Paris Convention, which stipulates that any acts accomplished in the interval cannot give rise to any third-party right or any right of personal possession. Even though the applicant of application A does not claim invention Y, he should have the right to exclude any third-party from obtaining a patent right with regard to invention Y because he has disclosed the invention Y. Further please explain the consistency with Article 28 of the TRIPS Agreement in the case where the exploitation of X is unreasonably prejudiced due to the existence of Y which has economical relation with X (example: X and Y are complementary components for one and the same device).

The statement by Japan in their follow up question that “[t]he US answer appears to apply only to a case where the claims of the two applications are found interfering and the first inventor is granted a patent right through the interfering proceeding” is not an accurate statement of the law regarding section 102(g) of title 35, United States Code. The Court of Appeals for the Federal Circuit has held that the application of section 102(g) is not limited to interference proceedings and that it also provides a basis for a type of anticipation. New Idea Farm Equip. Corp. v. Sperry Corp., 916 F.2d 1561, 16 USPQ2d 1424 (Fed. Cir. 1990); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986). With that understanding of the operation of section 102(g), we stand by our original response to questions 9 and 10.