Episode 8

Continuing from episode 7, we will explain the descriptions in patent specifications.
When preparing a patent specification, a patent attorney or patent engineer may add new information to the proposal prepared by the inventor, pretending to know the information.
Case 2 (Maxacalcitol case) in "Regarding the technical scope of patented inventions and their interpretation" in [Reference materials] is a case in which the doctrine of equivalents was applied. As a result, the technical scope of patented inventions (Article 70 of the Patent Act) has been interpreted more broadly than the scope of claims.
Looking at the investigator's commentary on the Supreme Court case above, "Based on the explanation of this judgment, if there is a statement in the specification that can be seen as disclosing an invention in which the starting material etc. has a trans vitamin D structure, such as a description of the process of converting the trans form to the cis form. It seems highly probable that there were special circumstances in which the claim of equality was not permissible.”. (“Housou Jiho” December 2017 issue, p. 213). In other words, if the preparer of the specification had added such information while pretending to know, there is a high possibility that the doctrine of equivalents would not have been accepted.
By the way, civil Precedents of the Supreme Court include "Minshu" and "Shumin". The "Minshu'' is the official Supreme Court Precedent, and the "Shumin" was created as an internal document of the court.
Supreme Court decisions are not directly written by Supreme Court judges, but are drafted by elite judges called "Supreme Court investigators," and the Supreme Court judges make additions and revisions.
Regarding the "Minshu", the monthly magazine "Housou Jiho" will publish the "Explanation of Supreme Court Precedents" by the investigator who prepared the original draft of the Supreme Court decision. For this reason, it is also called "investigator commentary''. The "Explanation of Supreme Court Precedents - Civil Edition'' has been compiled and bound by year.
The Supreme Court's judgment is relatively concise, and there is a wide range of interpretations. Complementing this is the "Explanation of Supreme Court Precedents.'' "Supreme Court Precedents Commentary" is essentially the Supreme Court's official commentary on Supreme Court Precedents (Minshu). For this reason, it is necessary to read Supreme Court Precedents (Minshu) while referring to the "Explanation of Supreme Court Precedents". However, the reality is that many patent attorneys are not even aware of the existence of " Explanations of Supreme Court Precedents''.