Episode 7

When preparing a patent specification, whether or not "effects of the invention" should be described. If so, should it be written in the [effects of the invention] column or in the "mode for carrying out the invention" column? There are lawyers and patent attorneys who are debating whether it should be done(https://jpaa-patent.info/patent/viewPdf/3240).
 However, in the enforcement of rights, that is, in patent infringement lawsuits, the technical scope of a patented invention (Article 70 of the Patent Act) is determined not only by the statement in the specification, but also by the relative relationship between the present invention and the subject invention, and may be interpreted more narrowly or more broadly than the scope of the claims (Refer to Court Cases 1 and 2 under "Technical Scope of Patented Inventions and Their Interpretation" in [Reference Materials], respectively).
 There is a point in pointing out that writing too much about the effects of the invention when preparing a patent specification will narrow the scope of the right. However, if the reason for invalidation is lack of inventive step (violation of Article 29, Paragraph 2 of the Patent Law) (Article 123, Paragraph 1, Item 2 of the Patent Law), rights cannot be exercised (Article 104-3 of the Patent Law). In this case, the right holder can use "advantageous effect" as the basis for claiming inventive step during the trial of an infringement awsuit(https://www.jpo.go.jp/system/laws/rule/guideline/patent/tukujitu_kijun/document/index/03_0202bm.pdf). The relationship between the description in the patent specification and the scope of rights is determined by the balance of multiple factors.