September 5, 2022

Effect of Priority Right under Article 4F of the Paris Convention in
Patent Invalidation TrialIntellectual Property High Court (IPHC)2019 (Gyo-Ke) No. 10132: Case regarding request for revocation of trial decisionJudgment date: November 5, 2020
By Taku Omori, Patent Attorney
Edited by Fumio Hirose, Patent Attorney
Miyoshi & Miyoshi

Case Summary
Defendant X possesses JP5575340B2 (“the ‘340 patent”) entitled “BRUNNIAN LINK MAKING
DEVICE AND KIT”. The ‘340 patent matured from the Japanese patent application 2013-537663,
which is divided from another Japanese application that is based on the PCT application
PCT/US2011/041553 claiming the right of priority to U.S. provisional application No. 61/410399 (“the‘399 application”) under Article 4F of the Paris Convention. After filing the ‘399 application and priorto filing the PCT application claiming the priority right based on the ‘399 application, a video (“thevideo A1”) disclosing an invention similar to the ‘340 patent was posted on a video sharing site.
Hanayama Co. Ltd. (“Hanayama”) filed a request for an invalidation trial citing the video A1 againstthe ‘340 patent before the JPO on February 23, 2018, but the trial decision upheld the patent. Hanayama
then appealed to the IPHC on October 4, 2019, requesting a revocation of the decision, but the request
was dismissed.
Among the multiple reasons for invalidity asserted by Hanayama before the IPHC, the effect of priority
right under Article 4F of the Paris Convention, for which the court dismissed Hanayama’s request, isexplained below.
Claim 1 of the ‘340 patent:

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A device for creating an item consisting of a series of links,
the links being Brunnian links,
the item being a Brunnian link item, andthe device comprising:1

a base (12); andat plurality of pins (26) supported on the base,wherein each of the plurality of pins includes an upper portion for holding the links in a desiredorientation and an opening in each of the plurality of pins located at a front side in the direction of arow of pins, and the plurality of pins are arranged in a plurality of rows, separated from each other andextending upward from the base. See FIG. 5A.

Hanayama’s Assertions
The priority claim under the Paris convention should be denied because the ‘340 patent invention
includes the following four features that are not disclosed in the ‘399 application:(a) A pin includes a plurality of grooves;(b) A pin bar and a base are integrally molded;(c) The pin bar fits onto a convex portion on the base instead of the groove on the base; and(d) The pin includes a gap instead of a groove, the gap penetrating through the pin.
Therefore, the ‘340 patent lacks novelty and inventive step over the video A1 and should be invalid.

Determinations by the Court
Interpretation of Article 4F of the Paris Convention
The court interpreted Article 4F of the Paris Convention to mean that a priority claim under the Parisconvention is only denied for those features that are not supported in a prior patent application onwhich the priority is based, and it stated that in order to invalidate the ‘340 patent, “those features
should be found to lack novelty or inventive step in light of the cited prior art references”. In otherwords, it stated that it was necessary to determine whether features (a) to (d) lack novelty or inventive
step over the video A1.
Determination of Novelty and Inventive Step for Features (a), (b), and (d)The court determined that the features (a), (b), and (d) were novel over the video A1 and held that“there is no sufficient assertion or proof to determine that these features lack inventive step over theinvention according to the video A1”. Thus, the court held that it was unnecessary to determine whether
these features are supported in the ‘399 application.
Determination of Novelty for Feature (c)The court found that because it is clear that the invention according to the video A1 includes feature(c) and the ‘340 patent also includes feature (c), the ‘340 patent lacks novelty over the video A1, and2

held that “in order to determine whether a priority claim under the Paris convention can be admitted,
it is further necessary to determine whether feature (c) is not supported in the ‘399 application”.
Determination of Support for Feature (c) in the ‘399 Application
The court found that the embodiment described in the‘399 application is configured with a recessprovided on a base and a pin bar fitted into the recess, while the feature (c) is configured with a convex
portion provided on a base and a pin bar fitted onto the convex portion. However, the court held that“because it is common knowledge that if one of these is conceived, the other is naturally conceived,
as long as the feature of providing a recess on a base is described, the feature of providing a convex
portion on a base should be within the scope of the assumption about this description even if there isno explicit description”. Consequently, the court determined that the feature (c) was supported by the‘399 application, and Hanayama’s assertions regarding this reason for invalidity were dismissed.

Analysis
The court determined whether the feature (c) was supported by the ‘399 application, but did not
determine whether features (a), (b), and (d) were supported by the ‘399 application on the grounds
that there was no assertion or proof to show that any of these features lacks inventive step over thevideo A1. Therefore, it is considered that, when denying the effect of priority in an invalidation trial orin an appeal in relation thereto, it is necessary to submit sufficient assertion or proof for lack ofinventive step over prior art references as well as arguments asserting that features are not supported
by a basic application of the priority claim.
**This article is only meant to provide a general introduction to a Japanese IP case in an easy-to-read format for our audience
outside of Japan.

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