The Effect of a Priority Claim

May 12, 2008
HARAKENZO World Patent & Trademark
Written by MITSUTOSHI HIRATA

{ Domestic Priority: Case 1 }
Addition of an embodiment and a claim


[About the Diagram]
· The claim made on Filing Date 1
   1. A device comprising an arrangement a1.
· The claims made on Filing Date 2 (The symbol Ο below indicates that a priority for the claim is valid; the symbol × below indicates that a priority for the claim is invalid.)
   × 1. A device comprising an arrangement A.
   Ο 2. A device according to claim 1, wherein the arrangement A is an arrangement a1.
   × 3. A device according to claim 1, wherein the arrangement A is an arrangement a2.
   × 4. A device according to claim 1, wherein the arrangement A is arrangements a1 and a2.

{ Domestic Priority: Case 2 }
Addition of an embodiment (no addition of a claim)


[About the Diagram]
· The claim made on Filing Date 1
   1. A device comprising an arrangement A.
· The claim made on Filing Date 2
   × 1. A device comprising an arrangement A.
   The addition of the arrangement a2 serving as a new embodiment to the arrangement A precludes a priority claim for claim 1.
   This determination is in line with the following examination criterion concerning a priority claim.

If matter (e.g. new embodiment) that is not described throughout the filing documents for the basic application is described throughout the filing documents for the Japanese application, or matter that is described throughout the filing documents for the basic application is deleted (e.g. part of the matter that constitutes the invention is deleted), and if, as a result, the invention pertaining to a claim in the Japanese application includes a part that departs from the scope of the description throughout the filing documents for the basic application, claiming a priority of such a part is invalid. (see Tokyo High Court decision on Oct. 8, 2003; trial decision cancellation lawsuit: “artificial nipple”, No. 539 (first trial), filed in 2002)

{ Domestic Priority: Case 3 }
In the case where, in Case 2, Embodiment a1 disclosed on Filing Date 1 does not comply with the enablement requirement and addition of Embodiment a2 on Filing Date 2 first enables working of the invention pertaining to arrangement A, claiming a priority of the invention in claim 1 (a device comprising an arrangement A) is invalid as in Case 2.

1. The premise

   Described below is the premise of the necessity for determination of validity of a priority claim, followed by explanation of how such validity is determined.

(1)In claiming a domestic priority, attention should be paid only in view of: (i) whether or not any prior art in view of Articles 29, 29(2), and 39 is found during the period of priority; and (ii) whether or not the priority is effective in excluding an application filed by another person during the period of priority. Further, even if the effect of a domestic priority claim is invalid, there is no problem in utilizing the domestic priority to further complete the specification by modifying the specification in compliance with the description requirements so that the scope of the claims is enriched.
(2)The following i) to iii) are basic examination criteria for determining validity of a priority claim.

i)	A priority is effectively claimed of what is within the scope of the description of the specification and the like (i.e. including, other than the specification, the claim and the drawings; hereinafter the same applies) for the basic application as filed. Whether a matter is within such scope of the description is determined in conformity with the criteria for determining the existence of new matter.
ii)	In principle, validity of a priority claim is determined for each claim. If the description of a claim includes alternatives, the validity is determined for each of the alternatives.
iii)	If a new embodiment is added, the validity of a priority claim of the addition is determined.

(3)As discussed above, validity of a priority claim is determined in conformity with the criteria for determining the existence of new matter. Thus, the examination criteria for new matter, provided in connection with amendment to the specification and the like, apply to the determination.

It should be noted that the application of the examination criteria for new matter to the determination of validity of a priority claim is regarded as distinct from such application to amendment to the specification and the like. Specifically, amendment to the specification and the like does not permit addition of new matter to the detailed description in the specification or to part of the drawings as well as to the claim. In contrast, an application claiming a domestic priority normally includes an art that is improved and

As is clear from the above, regarding the determination of validity of a priority claim, the addition of new matter to part of the specification and the like does not preclude claiming a priority of the entire application. The validity of a priority claim is determined for each claim in accordance with the examination criteria for new matter. If a claim includes alternatives serving as a matter that constitutes the invention, the validity is determined for each of the alternatives. And if a new embodiment of the invention is added, the validity is determined for the part pertaining to such an embodiment of the invention.

* This is an excerpt from “A Guide to the Domestic Priority System; How To Acquire 　a Patent Right Effectively” (Japanese book) (SOEI PATENT & LAW FIRM, published by the Research Institute of Economy, Trade and Industry).