Japón

Estados Unidos de América

Patentes (incluida la protección de variedades vegetales)

Initial question from Japan 10. According to 35 U.S.C. 102(g) or 35 U.S.C. 103, an application for an invention shall be rejected if, at the time of invention, it is identical to, or obvious to a person skilled in the art from, an invention by another person which was made before the former invention and had not been abandoned. In such case, if another person’s application claims a priority right, does the defeating effect go back to the priority date? If not (Hilmer II), please explain the consistency with Article 4B of the Paris Convention applied in Article 2.1 of the TRIPS Agreement setting out that the filing of a third party between the priority date and the actual date does not give rise to any right to the said third party. Furthermore, if this is not the case, it may happen that patented inventions which are obvious from one another may co-exist and exert an influence on one another’s exclusive rights in a restrictive way. Please explain whether this situation unreasonably prejudices the exclusive right conferred under TRIPS Article 28.

The issue addressed by section 102(g) is the date of invention. The evidence that can be relied upon to prove a date of invention is not limited to evidence of an earlier filing in another country, but can be any type evidence that will persuasive in establishing the date of invention by the applicant. Taking into account the changes made to 35 U.S.C. 104 through the Uruguay Round Agreements Act, if an applicant is able to demonstrate a date of invention that is prior to the effective filing date established through a claim to priority under 35 U.S.C. 119, that date of invention will be used in the context of application of section 102(g), rather than the priority date. The issue raised in the second part of the question, thus, does not arise under US law as amended to comply with US obligations under the TRIPS Agreement. The answer provided in relation to question No. 9 regarding prejudice of exclusive rights under Article 28 is equally applicable to this question.