1. Assertion by the Petitioner of trial for patent invalidation = The Plaintiff
The Exhibit Ko 1 moving image was posted to a moving-image posting website before the PCT application and after the Present U.S. Provisional Application (during the priority period).
The Present Invention includes structures not in the Present U.S. Provisional Application regarding four points; that is, [i] the pin includes the structure having a plurality of grooves; [ii] the structure in which the pin bar and the base are integrally molded is included; [iii] the structure of such a method that the pin bar is fitted not in the groove of the base but in a projecting portion on the base is included; and [iv] the structure in which the pin has not a groove but a gap penetrating the pin is included. Thus, the Paris Priority was denied, and as a result, the Present Invention lacks novelty and inventive step in relation with the Exhibit Ko 1 moving image and should be invalidated.
2. Excerpt from the Judgement
It is obvious that the Present Invention includes a structure not including the points [i] to [iv] asserted by Plaintiff as a new structure; that is, the structure as in the Example described in the description of the Present U.S. Provisional Application.
This structure constitutes one integrated and completed invention, and it is not such that the invention is completed only after the structures in [i] to [iv] are added.
In such a case, according to Article 4F of the Paris Convention, the priority cannot be denied and the Patent Application cannot be refused on the ground that the Patent Application made by claiming the Paris Priority includes a constituent portion not included in the application on which the priority is based, but the Paris Priority is denied only for the constituent portion not included in the application to be the basis. Thus, in order for the patent according to the Patent Application to be invalidated, not only must the patent be found to include the constituent portion not included in the application on which the Paris Priority is based, but the constituent portion needs to be found to lack novelty or inventive step in view of the Cited Invention.
If a patentee filed a foreign application for the invention with the structure of A and then claimed Paris Priority in our country after Invention B, and the structure became publicly known, and then filed a patent application for the invention including structures A + C; that is, the invention combining structure A and structure C not included in the foreign application but for which novelty and inventive step are found over Invention B, (for example, although its foreign application regarding the structure A portion preceded Invention B, the priority was claimed, and structure C is found to have novelty and inventive step over Invention B), the priority is denied even for structure A only on the ground that structure C not included in the foreign application is included, and the patent application is refused as a conclusion. But such conclusion cannot be allowed under Article 4F of the Paris convention. The points [i] to [iv] can also become independent constituent portions of the invention, respectively, and thus, the novelty and inventive step for the Cited Invention need to be examined separately for each of the structures.
The tool according to the Exhibit Ko 1 moving image is found to have the structure in the aforementioned [iii]. And as a claim in the Present Invention includes the structure in the aforementioned [iii], in this point, the Present Invention should be considered to lack novelty in relation with the Exhibit Ko 1 moving image.
Therefore, in order to determine whether or not the Paris Priority is approved, it is necessary to further determine whether or not structure [iii] is a structure absent in the Present U.S. Provisional Application. On the other hand, since it is not found that the tool according to the Exhibit Ko 1 moving image includes the structures in the aforementioned [i], [ii], and [iv], there is no support that the novelty matters, and there is no assertion or verification compelling enough to find that these structures lack inventive step over the invention according to the Exhibit Ko 1 moving image. Thus, the Plaintiff’s assertion should be considered unreasonable even without determining whether or not these structures are absent in the Present U.S. Provisional Application.
Then, it cannot be considered that the structure according to [iii] is a structure absent in the Present U.S. Provisional Application, and thus, the assertion by Plaintiff regarding this point is also unreasonable.
The Present Invention cannot be found to have lack of novelty and inventive step in relation with the Exhibit Ko 1 moving image, thus the conclusion is not erroneous.
By further determining whether or not structure [iii] is a structure absent in the Present U.S. Provisional Application, it is certain that the U.S. Provisional Application Document describes only the mode in which the pin bar is fitted in the groove provided in the base, but this is only a recitation of the Example, and even if the entire U.S. Provisional Application Document is examined, it cannot be understood to describe that the mode of fixing the pin bar to the base is limited to the structure according to this Example. And the structure of the mode in which the recess portion is provided in the base, and the pin bar is fitted in the recess portion (recitation in the Example in the U.S. Provisional Application Document) and the structure of the mode in which the projecting portion is provided on the base, and the pin bar is fitted in this projecting portion (the structure of [iii]) are exactly in opposite relation, and it is common general technical knowledge that if one of these is conceived of, the other is naturally conceived of. Thus, even if there is no explicit recitation, since the structure in which the recess portion is provided in the base is described, the structure in which the projecting portion is provided on the base should be considered to be included within the assumption of the recitation.
3. Some Consideration
In this judgement, the following opinion was stated.
In the case that an invention in respect to an application that serves as the basis of the priority claim is a completed invention and is not indivisibly united with a constituent portion added at the time of filing a later application claiming the priority, it should be noted that the priority right does not cover the added constituent portion; however, the priority right partially covers the constituent portion included in the application on which the priority is based. This opinion is consistent with the previous court cases.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: firstname.lastname@example.org
Attorney at Law & Patent Attorney
Nakamura & Partners
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Tokyo 100-8355, JAPAN