480 F.2d 880 (Fed. Cir. 1973), 8774, Yasuko Kawai v. Metlesics

Docket NºPatent Appeal 8774, 8838-8840.
Citation480 F.2d 880, 178 U.S.P.Q. 158
Party NameYASUKO KAWAI et al., Appellants, v. Werner METLESICS and Leo Henry K. Sternbach, Appellees, Application of Alan Hodgson LAIRD and John Selwyn Morley. Application of Paul Martin HARDY et al., (two cases).
Case DateJune 21, 1973
CourtUnited States Court of Customs and Patent Appeals

Page 880

480 F.2d 880 (Fed. Cir. 1973)

178 U.S.P.Q. 158

YASUKO KAWAI et al., Appellants,

v.

Werner METLESICS and Leo Henry K. Sternbach, Appellees,

Application of Alan Hodgson LAIRD and John Selwyn Morley.

Application of Paul Martin HARDY et al., (two cases).

Patent Appeal Nos. 8774, 8838-8840.

United States Court of Customs and Patent Appeals.

June 21, 1973

Page 881

Hugh A. Chapin, New York City, attorney of record for appellees. Samuel L. Welt, Nutley, N. J., William H. Epstein, Bernard S. Leon, Nutley, N. J., Hoffmann-La Roche Inc., Paul H. Heller, Laurence H. Pretty, Kenyon & Kenyon Reilly, Carr & Chapin, New York City, of counsel.

Paul N. Kokulis, Washington, D. C., Cushman, Darby & Cushman, Washington, D. C., attorneys of record, for Alan Hodgson Laird and Paul Martin Hardy. Lawrence A. Hymo, Edgar H. Martin, Fred S. Whisenhunt, Jr., William T. Bullinger, Washington, D. C., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Raymond E. Martin, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and ALMOND, Senior Judge.

ALMOND, Senior Judge.

These are four appeals from decisions of the Patent Office Board of Appeals and the Patent Office Board of Interferences. The outcome in these appeals, three from the Board of Appeals and one from the Board of Interferences, will in each case be determined by the answer to a question of law common to all four. That question is whether an application for patent filed in a foreign country must contain a disclosure of an invention adequate to satisfy the requirements of the first paragraph of 35 U.S.C. § 112 if a later filed United States application claiming that invention is to be accorded the benefit of the filing date of the foreign application as allowed by 35 U.S.C. § 119.

In each of these appeals, the board involved concluded that the foreign application must satisfy the requirements of section 112 if it is to be the basis of a claim for priority under section 119. We affirm those decisions.

Background to Appeals Nos. 8838, 8839, 8840

These appeals from decisions of the Patent Office Board of Appeals involve three commonly assigned applications. 1 In each of these cases, filed by British inventors, all of the claims in question, which were directed to chemical compounds per se, were rejected by the examiner as unpatentable under 35 U.S.C. § 102(a) or 35 U.S.C. § 103. The rejections were made in view of references which appeared in the literature and had effective dates prior to the date on which the applications in question were filed in the United States.

In order to avoid the effect of these references, appellants sought to obtain for their United States applications the benefit of the earlier filing dates of certain British provisional specifications. The filing dates of the latter antedated the publication dates of the references in question. Therefore, if the United States applications were accorded the benefit of the filing dates of the British provisional specifications, these references would not be prior art under sections 102(a) or 103. Appellants apparently agree that the rejections would be proper if the references can be regarded as prior art since the articles describe the same research efforts which lie behind

Page 882

the applications involved in these appeals.

The examiner refused to accord the United States applications the benefit of the filing dates of the earlier British applications. The basis for this refusal was his determination that the British provisional specifications were not adequate to meet the disclosure requirements found in the first paragraph of section 112. 2 More specifically, the examiner had this to say:

The disclosure of utility * * * is not deemed to be sufficient to comply with the disclosure requirements for U.S. applications mandated by 35 U.S.C. 112. That a foreign application must comply with 35 U.S.C. 112 to be entitled to the benefit of the foreign filing date for the purpose of overcoming a reference is set forth in M.P.E.P. 201.15 which reads: "The foreign application must be examined for the question of sufficiency of the disclosure under 35 U.S.C. 112 * * *."

The board sustained the examiner on this point and appellants' attorney conceded at oral argument before this court that the British provisional specifications would not satisfy, if applicable, the requirements of section 112. Therefore, in these appeals the only issue before this court, solely a legal one, is whether the requirements of that section are to be applied against the British applications.

Background to Appeal No. 8774

This appeal is from the decision of the Patent Office Board of Interferences awarding priority of invention to Metlesics et al., the senior party, as to a single count relating to certain 1, 4-benzodiazepine-2-one compounds.

Kawai et al. (Kawai) became involved through their application serial No. 675, 249 filed October 13, 1967. Metlesics et al. (Metlesics) became involved through their application serial No. 629, 934 filed April 11, 1967.

In view of the respective filing dates, Kawai had the status of junior party when the interference was declared and, therefore, had the burden to establish by a preponderance of the evidence that they were entitled to the award of priority. During the interlocutory stage of the interference, Kawai presented a motion under Patent Office Rule 231(a)(4) to be accorded the benefit of the filing date, October 14, 1966, of Japanese application serial No. 67766/66, as would be allowed by section 119, and to shift the burden of proof to Metlesics.

This motion was denied by the primary examiner on the ground that the Japanese application did not comply with 35 U.S.C. § 101 or 35 U.S.C. § 112. The examiner said:

Thus for Kawai to receive the benefit of priority based on the Japanese application, the Japanese application must meet the statutory requirements for a proper United States application including such requirements as 35 U.S.C. 101 and 35 U.S.C. 112, since a United States application, in order to be proper, and to be relied upon for benefit of priority under 35 U.S.C. 120, must comply with the utility and how to use requirements of 35 U.S.C. 101 and 35 U.S.C. 112.

Ultimately, the examiner concluded that the Japanese application did not meet these requirements, meaning Kawai would be restricted for priority purposes to the filing date of the United States application. The Board of Interferences sustained the examiner's decision, thus prompting this appeal by Kawai.

In this appeal, appellants argue that the requirements of section 112 should

Page 883

not be read into section 119. However, they do not concede that the Japanese application is inadequate to meet the requirements of section 112. In that respect this appeal is unlike those coming from the Board of Appeals.

If appellants' Japanese application does meet the requirements of section 112, they would be entitled to the benefit of its filing date no matter what decision is made by us regarding the applicability of its provisions to foreign-filed applications relied upon for priority purposes. However, we first turn our attention to the question of whether a foreign application must meet the disclosure requirements of our law.

OPINION

The Requirements of Section 112 and Foreign Applications

This court has extensively discussed the history and purpose of section 119 in In re Hilmer, 359 F.2d 859, 53 CCPA 1288 (1966). However, we think a brief review here will be an aid to understanding our decision.

The predecessor statute (R.S. 4887) to section 119 was enacted on March 3, 1903 (32 Stat. 1225). The purpose of the earlier statute was to secure for United States inventors certain benefits under a treaty known as the Convention of Paris for the Protection of Industrial Property 20th March 1883 (Paris Convention). The United States had become an adherent to this treaty in 1887. 3

Prior to the time when the treaty became effective, an inventor's right to a patent could be defeated in most countries if prior to the date an application for patent was filed, a publication or use of the invention by the inventor or a third party had occurred in the country where the application was made. In some countries, e. g., France, a publication or use anywhere in the world would be sufficient to defeat the applicant's right to a patent. This would be true even though the inventor had made an application for a patent on the same invention in another country, usually his native country, prior to the occurrence of any of these disabling events.

Article 4 of the Paris Convention represented an accord among the signatories whereby an inventor could deposit an application in one Convention country, usually but not necessarily his own, and delay filing in a second for up to seven months (later extended to twelve months) without losing his right to a patent because of an intervening use or publication. This right to delay filing is what we now refer to as the "right of priority" recognized in section 119.

It was also recognized that this right of priority extended to those cases where two applications for patents on the same invention were filed in a Convention country by different inventors. In such a case an applicant could have his application given the benefit of the filing date of an earlier application in another Convention country.

In effect, then, with adoption of the Paris Convention, an applicant's rights in one country insofar as they are affected by the filing date of a patent application could be determined as of the filing date of an earlier...

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