Patent Law and Theory
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Patent Law and Theory

A Handbook of Contemporary Research

Edited by Toshiko Takenka

This major Handbook provides a comprehensive research source for patent protection in three major jurisdictions: the United States, Europe and Japan. Leading patent scholars and practitioners join together to give an innovative comparative analysis both of fundamental issues such as patentability, examination procedure and the scope of patent protection, and current issues such as patent protection for industry standards, computer software and business methods. Keeping in mind the important goal of world harmonization, the contributing authors challenge current systems and propose necessary changes for promoting innovation.
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Chapter 13: The Novelty and Priority Provision under the United States First-to-File Principle: A Comparative Law Perspective

Toshiko Takenaka


Toshiko Takenaka* 1 Introduction Patent professionals trained in first-to-file countries wonder why the novelty and priority provisions set forth in 35 USC § 102 are so complex and difficult to understand because the novelty and priority provisions of first-to-file countries are short and simple. Only after studying the historical backgrounds of each provision and the policy considerations related to the terms used in those provisions, can they hope to understand the complex structure of defining prior art and the unique interpretation given to the terms. However, the more familiar they become with US case law and the policies emphasized by US judges, the more they question whether the United States actually follows the first-to-invent system, which US patent scholars and professionals claim to follow.1 The policies US judges emphasize are similar to the policies emphasized by first-to-file patent systems. Furthermore, the examination practices followed by the United States Patent and Trademark Office (USPTO) are very similar to that of patent offices in first-to-file countries. On its face, the § 102 novelty and priority provisions under the US first-toinvent policy are very different from novelty and priority provisions under the first-to-file principle. The first provision defining novelty in § 102(a) sets forth a determination of novelty as of the invention date, and § 102(g) provides a rule that determines priority based on the date of first invention rather than the date of the first application.2 However, are these differences in fact real? And, * This chapter was revised from Toshiko Takenaka, Rethinking the United...

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