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Q34. Recovery against Non-Inventor’s Application/Patent Right

Q34. Recovery against Non-Inventor’s Application/Patent Right
 Explain a recovery against non-inventor’s application/patent right, namely, a way to win the patent right by its true owner.

A34. The ways differ depending on its situation.
 (1) Before a publication of a foregoing non-inventor’s application
 In this case, the non-inventor’s application has a reason for rejection and the invention still keeps its novelty. The true owner can file an application and during its prosecution the Examiner may raise a reason for rejection, based on Art.29-2 (unpublished prior art)*. In a reply to the office action, the true owner can point out that the sited application has defect and the inventor of both applications are same, Art.29-2 cannot be applied.
 Note that, generally it is extremely difficult to know that non-inventor’s application has been filed before its publication.
 *Under current practice, a reason based on Art.39 (first to file rule) will not be raised because the applicants of the two applications are different.
 (2) After a publication of a foregoing non-inventor’s application, within six months from the publication date
 In this case, the invention has lacked its novelty, but Art.30(2) (grace period in case of unwilling disclosure) is applicable. The true owner still can file an application with claiming grace period, see also Q56.
 (3) After six months from a date of a publication of a foregoing non-inventor’s application.
 In this case, the invention has lacked its novelty, thus a patent right for the invention cannot be obtained by filing a new application.
 Before a grant of the non-inventor’s patent application, status as the applicant can be retrieved by filing a notification of change in applicant to the JPO with a deed of assignment. If the non-inventor do not agree with the deed, final and conclusive judgment of a quiet title action for the status as the applicant can substitute the deed.
 After the grant, revised Art.74 will allow assignment of the patent right obtained by the non-inventor to the true owner. The effective date of revised Art.74 is April 1, 2012.