Episode 32

In Episode 7, we discussed the point that excessive descriptions of the effects of an invention when drafting a patent specification can narrow the scope of rights.
Regarding the relationship between an invention's inventive step and its effects, a court decision (Tokyo High Court, Case 2002 (Gyo-Ke) No. 460, Decision of March 23, 2004) stated, "The inventive step of an invention should, in principle, be judged based on its objective structure. The very act of attempting to solve a specific problem through that structure is, in the end, merely the inventor's subjective intention. Affirming patentability based on the existence of such an intention would ultimately result in the granting of multiple patents with objectively identical structures, and is therefore unacceptable. However, there may be exceptional circumstances in which a patent may be granted for an invention whose structure itself is easily conceivable, such as when an effect is discovered that would not have been easily anticipated or discovered by a person skilled in the art."
Regarding the relationship between the inventive step and effect of this invention, the Supreme Court ruled (Supreme Court Decision No. 69 of 2018 (Gyo-Hi) of August 27, 2019, Third Petty Bench, Shumin No. 262, p. 51) that "regarding the existence of an inventive step in a patented invention relating to the pharmaceutical use of a compound, the court below denied that the effect of the patented invention was unpredictable and significant."
While this ruling was made in the specific field of "whether or not a patented invention relating to the pharmaceutical use of a compound involves an inventive step," the basic concept can also be applied to determining inventive step in patent application examination.
The way the effect of the invention is described in the specification will differ depending on whether the feature of the invention lies in the basic configuration or in the significant effect achieved by that configuration.
When drafting the specification, careful consideration should be given to whether the effect of the configuration of the invention could have been predicted by a person skilled in the art at the time of filing, and whether it is a significant effect that goes beyond the range of effects that a person skilled in the art could have predicted from the configuration. If such a significant effect exists, it should be described in the specification.
Currently, infringement of equivalents is being examined in patent infringement lawsuits (see Episode 23). In order to make it easier to recognize infringement by equivalents for alleged infringing products that have different configurations from the claimed invention, it is considered effective to state the advantageous effects obtained by the claimed invention in order to clarify the second requirement of equivalents (having the same functional effect). Making it easier to recognize infringement by equivalents will lead to expanding the scope of rights.

Episode 31

This article explains exclusion claim in claims amendments and corrections.
An "exclusion claim" is a claim that explicitly excludes only some of the matters encompassed by the claimed invention from the claims, while leaving the stated matter intact (Examination Guidelines, Chapter 2, 3.3.1(4) - Amendments to Include Exclusion claim).
This article explains "exclusion claim" by citing the Intellectual Property High Court Grand Bench Decision of May 30, 2008, Case 10563 (Gyo-Ke) of 2006.
As a prerequisite for determining whether a correction to include a "exclusion claim" is permitted, this decision presented the following general criteria for determining whether a correction "within the scope of the matters described in the specification or drawings" is required under the Patent Act.
"'Matters described in the specification or drawings' are those matters disclosed to third parties as a prerequisite for obtaining a monopoly through patent rights for inventions that are creations of highly advanced technical ideas. Therefore, the 'matters' referred to here are presumably technical matters related to the invention disclosed in the specification or drawings. 'Matters described in the specification or drawings' are technical matters that can be derived by a person skilled in the art by combining all of the descriptions in the specification or drawings. If an amendment does not introduce new technical matters in relation to the technical matters derived in this way, the amendment can be said to be made 'within the scope of the matters described in the specification or drawings.'"
The court then held as follows, clarifying that the general standard of judgment applies even when requesting a correction to exclude, by means of a so-called 'exclusion claim' a portion of an invention in a patent application that is identical to an earlier invention that was not publicly disclosed at the time of filing the patent application.
"...because the patentee is unaware of the existence of the prior invention at the time of filing the patent application, the specification or drawings of the patent application usually do not contain any specific description of the prior invention. However, the proviso to Article 134-2, Paragraph 1 of the Patent Act still applies to corrections that correct matters not specifically described in the specification or drawings. As long as such corrections are deemed not to introduce new technical matter into the technical matters disclosed by the descriptions in the specification or drawings, they should be considered corrections made 'within the scope of the matters described in the specification or drawings.'
It is not appropriate to assume that amendments to make a 'exclusion claim' are inherently unacceptable. In other words, even when the amendments are made in a negative manner, such as in an amendment to make a 'exclusion claim,' if the matters to be amended are matters described in the specification, etc., then, just as in the case of amendments that involve positive descriptions, it can be said that no new technical matter is introduced unless there are special circumstances. However, conversely, just because the matters to be amended themselves are not described in the specification, etc., does not mean that the amendment introduces new technical matter.
Therefore, whether an amendment to create a "exclusion claim" can be said to be made "within the scope of the matters described" in the specification, etc., should ultimately be judged based on whether the amendment does not introduce new technical matters in relation to the technical matters described in the specification, etc.

Episode 30

This article explains the legal system. Legal systems are divided into case law and statutory law. Case law is also known as Anglo-American law. Statutory law is also known as civil law and has its origins in Roman law.
Case law systems are characterized by precedent binding, whereby decisions made in earlier court cases bind decisions made in later court cases.
The source of law in statutory systems is statutory law. judicial precedent complements statutory law and is not precedent binding.
Japan followed a case law system until the Edo period. When conducting trials at the magistrate's office, they would consult past court records and make decisions based on similar cases.
Many countries around the world were once colonized by European powers. After independence, such countries are susceptible to the influence of their former colonial masters as they modernize.
Japan has never been a colony, so when the Meiji government was building a new national system, it visited major European countries (Britain, France, and Germany) and, after independently selecting and rejecting the systems of each country, adopted a statutory law system. Japan is the only country in the world with such a history.
In Japan, a "judicial precedent" refers to a judgment that "contains legal opinions that should be applied to other cases" (Supreme Court, 1951 (A) No. 3474, Decision of the First Petty Bench, February 12, 1953, Criminal Cases, Vol. 7, No. 2, p. 211).
In Japan, "judicial precedent" is not binding, and "all judges shall be independent in the exercise of their conscience and shall be bound only by this Constitution and the law" (Article 76, Paragraph 3 of the Constitution). "Judges shall follow their conscience, as stated in Article 76, Paragraph 3 of the Constitution, means that judges shall follow their own inner good sense and moral sense, without succumbing to external pressure or temptation, whether tangible or intangible" (Supreme Court, 1947 (Re) No. 337, Grand Bench Decision, November 17, 1948, Criminal Cases, Vol. 2, No. 12, p. 1565).