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Q21. Hypothetical Case and Discussion

Q21. Hypothetical Case and Discussion
Assume the following factual situation:
a. January 1, 2005 – the U.S. application (US1) is filed claiming “A”;
b. January 1, 2006 – the Japanese application (J1) is filed claiming “A” and claiming priority based on the U.S. application filed on January 1, 2005 (US1); and
c. January 1, 2007 – a second Japanese application (J2) is filed claiming “A and A’” (“A’” is added), and claiming priority based on both the U.S. application filed on January 1, 2005 (US1) and the Japanese application filed on January 1, 2006 (J1).

Whether under the Japanese practice, is the second Japanese application (J2) noted in “c” above a proper application?

p-q21

A21. The second application is a proper application as an application. However, the claiming Convention priority may be denied depending on the situation which will be explained below.
(1) With respect to the claimed invention “A”:
First, the U.S. priority based on the U.S. application (US1) will be apparently denied in the course of prosecution for the reason that the second Japanese application (J2) was filed more than one year after the priority date [Paris Convention Art.4A(1) and 4C(1)].
Second, the so-called internal priority based on the first Japanese application (J1) will also be denied, because the Patent Law Art.41 prohibits extension or accumulation of the period of priority.
Third, a patent application is laid open after one year and 6 months from the filing date of the first application or the priority date, if the Convention priority is claimed in the application. Therefore, the first Japanese application (J1) may have already been laid open when the second Japanese application (J2) was filed.
Accordingly, as for the inventive part of the claim “A”, the second Japanese application (J2) will be rejected for lack of novelty over the laid-open publication of the first Japanese application (J1).
(2) With respect to the inventive part of the claimed invention “A’”:
Depending upon when “A’” is first disclosed in a specification, different results may take place as follows:
(i) If “A’” is first disclosed in the U.S. application (US1) and “A’” is also included in the first Japanese application (J1), the invention “A’” will be rejected for the same reason as in the case of “A”;
(ii) If “A’” is first disclosed in the first Japanese application filed January 1, 2006 (J1), the second Japanese application (J2) can enjoy the benefit of the internal priority; or
(iii) If “A’” is first disclosed in the second Japanese application filed January 1, 2007 (J2), as for the inventive part of the claim “A’”, the second application (J2) will be considered and handled as the “first” or “earliest” application.