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December 27, 2007


Even ignoring 103 issues, do you think that the USPTO has realized that "prior art" is defined differently in the U.S. and in Japan, so what is correctly patentable in one jurisdiction should not necessarily be patentable in the other? (From previous initiatives, I would doubt they have, or if they have they choose to ignore the difference. Anyway, such a clear error on the USPTO's part could likely destroy the presumption of validity.)

[The 103 issues are apparently even thornier, since in Japan obviousness-type rejections cannot use prior art which is only available under their equivalent of 102(e).]

NIPRA: You raise an interesting issue that could present problems in the quest for "trilateral harmonization" if not properly addressed. From what I've read of the Patent Prosecution Highway program, it is not merely a "rubber stamp" to patentability, but helps to identify issues of patentability that were relevant to the initial examining office. If differences in what can be considered prior art in one of the countries is a factor during examination, hopefully the examiner will identify and address that issue before allowing the patent. As you also mention, there are a number of other issues concerning differences between obviousness and inventive step in the US and EP/JP, respectively. I imagine that those differences would be held to the status quo, and that the PPH program will not sway one office to another office's threshold requirement for obviousness/inventive step. That being said, I could be completely wrong. Thanks for reading and thanks for the comment.

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