ホーム > English > Q22. Hypothetical Case and Discussion, Continued

Q22. Hypothetical Case and Discussion, Continued

Q22. Hypothetical Case and Discussion, Continued
Assume the following factual situation (similar to Q28):
a. January 1, 2005 – the U.S. application (US1) was filed claiming “A”;
b. A PCT (U.S.) application (PCT) was filed claiming “A” and claiming U.S. priority of January 1, 2005 (US1) (please note that on or after January 1, 2004, when a PCT application is filed, all the member countries are automatically designated);
c. July 1, 2006 – A first Japanese application (J1) was filed claiming “A” and claiming priority (U.S.) of January 1, 2005 (US1) and PCT of January 1, 2006 (PCT); and
d. July 1, 2007 – A second Japanese application (J2) was filed claiming “A” and “A’”, and also claiming priorities based on all of January 1, 2005 (US1), (PCT) of January 1, 2006 (J1) and (JP) of July 1, 2006 (J2).
Whether under the Japanese practice, is the second Japanese application (J2) a proper application?

A22. 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.

p-a22

(1) With respect to the claimed invention “A”:
First, all of the priority claims based on the U.S. application (US1), the PCT application (PCT), and the first Japanese application (J1) will be denied in the course of prosecution for the same reason as stated in Q28.
Second, the first Japanese application (J1) may have been already laid open when the second Japanese application (J2) was filed, because the period of one year and 6 months for open-laying the application is counted from the international filing date of the PCT application (January 1, 2006). In addition, the PCT application (PCT) should have been already internationally published 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) or the international publication of the PCT application (PCT).
(2) With respect to the claimed invention “A’”:
Depending upon when “A’” is first disclosed, different results are expected to take place as follows:
(i) If “A’” is first disclosed in the U.S. application filed January 1, 2005 (US1) or the PCT application (PCT), the invention “A’” will be rejected for the same reason as in the case of “A”;
(ii) If “A’” is disclosed in the first Japanese application filed July 1, 2006 (J1), the second Japanese application (J2) can enjoy the benefit of the internal priority;
(iii) If “A’” is first disclosed in the second Japanese application (J2) filed on July 1, 2007, as for the inventive part of the claim “A’”, the second application (J2) will be considered and handled as the “first” or “earliest” application.