United States: Uniform Paris Convention Priority Requirements*

By Harold C. Wegner**

A prime goal for all domestic patent systems is to conform to a simple, international norm for disclosure of inventions. This better permits a single patent application to be drafted that will support claims on a global basis. Odd quirks in local disclosure requirements geometrically complicate the task for innovative companies who may lose protection in some countries; they otherwise will face mounting costs in tailoring their original applications to meet divergent standards. See § II, Need for Common Disclosure Requirements.

For the past seventy years, there has been an internationally codified common standard for disclosure for priority under the London Revision of the Paris Convention in 1934. Priority should be granted if the "documents as a whole [in the priority application] specifically disclose" the elements of the invention. There is no provision for any additional requirement for priority. See § III, The Paris Convention Standard for Priority.

Until the 1970’s, there was a school of thought that if there were divergent standards of disclosure, this could be overcome at the time of the second (convention) filing: Thus, any deficiency could be overcome by filing a home country application meeting the home country law, and then a Paris Convention application disclosing the same invention; this second filing would have a higher disclosure level to meet the second country’s requirements. But, this school of thought was shattered by a pair of appellate decisions in the United States and Japan in the 1970’s. After that time, it has been globally clear that if there is a special disclosure requirement in a particular country, it must be met early: Priority is to be granted only if the home country priority application meets the special disclosure requirement of the second country at the priority date. This is now the global norm from which there will be no retreat. See § IV, Disclosure Judged at the Priority Date.

Japan and the United States have the greatest self-interest in having a strong, global patent regime. It would be logical, therefore, that these two countries would be at the forefront in demanding that all countries avoid special quirks in their local laws. Yet, the two principal examples of deviations from the Paris Convention norm are found in these two countries. See § V, Pacific Rim Deviations from the Priority Rules. Today, a glaring deviation is found in the American Rochester case several; Federal Circuit opinions require a disclosure that may need to show proof of completion of an invention to show "possession" – a unique American requirement. See § V-A, The American Rochester Violation.

The Rochester violation is strangely reminiscent of a parallel Japanese violation from the 1970’s. At that time, in the Hoechst case, priority was denied in Japan where the home country application failed to have working examples to establish "completion" of the invention. See § V-B, The Abandoned Hoechst "Completion" Rule.

The festering sore of Rochester is only a preview of what is likely to come on the international patent scene. This is particularly true if developing countries learn from the United Stats as a "teacher" and emulate this unfortunate deviation from the global norm. See § VI, International Comity and Cooperation.

The problem, however, is not with the trilateral cooperation amongst the patent granting authorities; but, rather it stems from the odd decisions of a judiciary that is largely divorced from contact with the global community. The Rochester case therefore points to the need to better educate the judiciary. See § VI-A, The Need For Judicial Education. Additionally, more formal cooperation amongst the patent granting authorities may also help to provide a better framework to avoid any future "Rochesters". See § VI-B, The Desirability of an International Protocol

II. Need For Common Disclosure Requirements

Obtaining patent protection on a global basis is a necessity for high technology-based companies in all areas of the world. This is particularly true for organizations based in Japan and the United States. A simple, global patent regime to permit these entities to obtain protection in all major and developing countries of the world necessarily requires that a "home country" application can be filed simply and efficiently that will meet the disclosure requirements of all countries of the world.

It is imperative that the various patents in third countries are given the assurance of a Paris Convention priority right based upon the home country application: Without such priority, the third country patents stand naked as of their filing dates, and are then invalid based upon internet (or other) prior art "publications" that take place in the interval.

Japan and the United States are the two leading high technology countries in the world; they have the most to gain from a smoothly functioning global patent regime. The two countries have the greatest incentive to join together to support a set of simple disclosure rules.

Conversely, unilateral deviations from a simple norm by either country send shock waves around the patent world; patent applicants from third countries may find themselves with defective patent rights when they enter either country and are subject to the quirks of arbitrary, unilateral disclosure rules.

The big losers over the long haul are the Japanese and American business concerns who depend so heavily on the global patent regime. Thus, if an odd quirk of Japanese or U.S. practice is permitted to the prejudice of third country patent applicants, this creates a blue print for any third country to create its own unique quirks; such unique quirks will then come to the detriment of the Japanese and American patent communities.

With respect to the patent practice amongst Japan, the United States and other highly developed countries, a disparity in disclosure requirements creates a serious, practical problem as well. Obviously, corporate Japan and corporate America are both highly sophisticated and understand the nuances of the patent laws of both countries and can adapt to differences in practice. But, this is at a cost. If there are different disclosure standards in the two countries, then the home country patent application must be drafted according to the laws of both countries. If one has a "high" standard of disclosure and the other a "low" standard of disclosure, this has a certain unfairness to patent applicants in both countries.

If the standard for disclosure is higher in the home country, then as a general rule the original filing will be delayed somewhat. This is because the application will more likely be delayed, to the point when the disclosure requirements of the home country are met: If the priority date is deferred this may mean that an intervening third party may obtain superior rights.¹

If the standard for disclosure is lower in the home country, then if the applicant forgets to meet the foreign disclosure requirements at the time of the home country filing, then the foreign application may be denied priority.

III. The Paris Convention Standard For Priority

The global standard for priority is spelled out in the Paris Convention: Since 1934, it has been explicitly stated in that treaty that priority is granted if "the [priority] application documents as a whole specifically disclose [the] elements" of the claimed invention.²

To be sure, there have been some difficulties with the standard for priority. This is manifested by the efforts of the Enlarged Board of Appeal of the European Patent Office³which seemingly straightened out confusion over priority standards within Europe in its Priority Interval case.⁴But, as more recently refined in yet a further Enlarged Board opinion – In re Same Invention,⁵the "new matter" standard in Europe today is determined by the test: "The [priority requirement] of ‘the same invention’ [of the European Patent Convention for priority purposes] means that priority of a previous application [to support] a claim in a European patent application * * * is to be [granted] only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."⁶

More than thirty years ago, there was a school of thought that it was acceptable for a patent applicant to meet the disclosure requirements on a country by country basis at the time of filing in each country. But, thirty years ago, the bubble was burst in the then-notorious Kawai case.⁷

In the Kawai case, a Japanese "home country" patent application was filed that was in full compliance with the Japanese patent law of the time; it met the disclosure requirements for utility of the chemical invention claimed by Mr. Kawai. Within the Paris Convention year, a United States patent application was filed to meet the then-more difficult American disclosure requirements for chemical cases.⁸ But, because Kawai did not meet the United States disclosure requirements in the Japanese filing, priority was denied.

This sparked a global debate with fingers pointed at the United States for a unilateral arrogance in imposing its own, higher disclosure requirements even as of the priority date in the foreign country. The United States steadfastly and without apology claimed the right to impose its own higher standards of disclosure on foreign applicants as of the foreign priority date.

There was no immediate resolution of this problem, and indeed, no realistic proposal was ever put forward whereby priority could be granted based upon a home country application if it did not meet the substantive disclosure requirements of the foreign country.

The Japanese judiciary answered Kawai by adopting the standard of Kawai through the equally notorious Tokyo High Court Hoechst case.⁹ The Kawai standards are now well established in the United States. ¹⁰

As with all other countries, the United States has historically had a requirement that for priority the same invention must be disclosed in the original, priority application (and in a manner to permit an art-skilled worker to carry out the invention). But, exceptionally, renegade panels of the Federal Circuit have imposed an additional requirement for priority: There must also be "possession" of the full scope of the generic invention in the priority application even if there is an identical disclosure of a generic invention in the priority application.

The Federal Circuit has refused as an en banc court to consider this issue; most recently, the court failed by a 7-5 vote to take the matter en banc in the notorious Rochester case.¹¹ The Rochester case has recently been considered in Osaka at a Foley & Lardner Roundtable.¹²

In essence, a renegade panel in Rochester has held that if there is a generic invention in the chemical or biotechnology area, an original claim in the application (or priority application) does not meet the disclosure requirements of 35 USC § 112, ¶ 1, unless "possession" of the full scope of the invention is demonstrated as of the filing date.

Thus, if a complex chemical or biotechnology invention has a broad claim but few "working examples", the Rochester line of cases indicates that the disclosure may be defective because of the absence of proof of "possession" of the invention.

To be sure, there is only a minority of the Federal Circuit that has endorsed the Rochester line of cases. There is only a handful of cases that support the Rochester reasoning, starting with the Eli Lilly case from seven years ago.¹³

Several members of the court have spoken out strongly against Rochester, most notably Circuit Judge Rader. He points out that "[i]n 1997, this court for the first time applied the written description language of 35 U.S.C. § 112, ¶ 1 as a general disclosure requirement in place of enablement, rather than in its traditional role as a doctrine to prevent applicants from adding new inventions to an older disclosure."¹⁴ He points out that, "[i]n simple terms, contrary to logic and the statute itself, Eli Lilly requires one part of the specification (the written description) to provide ‘adequate support’ for another part of the specification (the claims). Neither Eli Lilly nor [Rochester] has explained either the legal basis for this new validity requirement or the standard for ‘adequate support.’ "[T]his new judge-made doctrine has created enormous confusion which this court declines to resolve [by denial of rehearing en banc]."¹⁵

Circuit Judge Linn agreed with Judge Rader: "The [Rochester] case perpetuates the confusion our precedent *** has engendered in establishing ‘written description’ as a separate requirement of 35 U.S.C. § 112, paragraph 1, on which a patent may be held invalid. That precedent should be overturned."¹⁶ He adds that "[c]onstruing [35 USC §] 112 to contain a separate written description requirement beyond enablement and best mode creates confusion as to where the public and the courts should look to determine the scope of the patentee's right to exclude.¹⁷

Rochester is not unique. In many ways, it sub silentio follows the bizarre model of the 1977 Hoechst case.¹⁸

In Hoechst, the Tokyo High Court created a special standard for priority different from and in addition to the requirement that an applicant provide an enabling disclosure of an invention. This Hoechst standard was one of establishment in the specification of "completion" of an invention.

Under the Hoechst "completion" of the invention standard, if the patent applicant did not establish such "completion" as part of his original patent application, then the application was defective. Where a western applicant filed a Japanese application that did show completion, but the home country priority application did not show such Japanese-required completion, priority was denied. Thus, a perfectly enabled priority application for the identical invention was denied as basis for priority because the priority application lacked sufficient working example support.

In the Hoechst case itself, the German patent applicant claimed a chemical reaction based upon a prophetic example that had not been shown to have been reduced to practice. The disclosure was clearly enabling in the sense that the priority disclosure contained a sufficient blueprint to permit anyone skilled in the art to reproduce the invention. Yet, the invention was deemed "incomplete." The Tokyo High Court held that "[e]ven if [the] reaction *** is described [in the specification of the priority application], whether or not such reaction actually proceeds [I accordance with the teachings in the application] generally cannot be recognized until there is a confirmation of the reaction by means of experimentation. This is because chemistry is called an experimental science. Therefore, in order generally to have an invention relating to a chemical reaction [be deemed] complete, the effect and result [of the reaction] must be confirmed and the existence of the chemical reaction [in fact] must be supported ***. [T]he reaction must [have been carried out through experimentation], and data showing that he reaction was actually carried out by experimentation must be disclosed in the [original] specification."¹⁹

The problem first in Hoechst and then in Rochester was not one of a mistaken approach made by either the patent granting authority or by the Diet or Congress. Rather, both Hoechst and Rochester are based upon mistaken interpretations of domestic patent law by appellate courts.

In neither Hoechst nor Rochester did either of the two appellate courts take into consideration the ramifications of their actions on the international patent regime. In neither Hoechst nor Rochester did the courts give due consideration to the Paris Convention and the need for an internationally consistent disclosure standard.

Perhaps a lesson to be drawn from both Hoechst and Rochester is the need for a better education of the judiciaries in both countries concerning the Paris Convention and the role of the domestic patent systems the two courts administer as part of the global patent fabric. In this regard, there has been much progress. With respect to Japan, members of the judiciary have frequently had extended stays in the United States to study, first hand, both the patent system of the United States and the working of foreign judicial systems. In parallel, some members of the American judiciary have made reciprocal efforts, yet others have failed to give even the slightest consideration to the international norms. The need for broader judicial education is perhaps no better manifested than in the Rochester case.

It would in theory be ideal to have a new provision in the Paris Convention to more specifically proscribe renegade actions such as Rochester, but this is not feasible.²⁰

However, the major patent granting countries of the world can and should unite to set forth common disclosure standards that can be uniformly and fairly administered by all offices. In this regard, it would be useful to have a protocol to further define compliance with Article 4H: "For purposes of priority a disclosure in an earlier application shall be deemed adequate where the application documents as a whole specifically disclose the invention; any local country requirement for proof of completion of the invention may not require including such proof in the original application documents."

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