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[Patent★★] “Interleaving Paper for Glass Plates” Case: A case in which the court deemed that the invention of the prior application falls under an “invention” which is appropriate material as a cited invention (Article 29-2 of the Patent Act). If an invention lacks concreteness, or technical content of an invention is insufficiently disclosed even taking into consideration the common general technical knowledge of a person ordinarily skilled in the art, it does not fall under the “invention” and does not have an effect of excluding the later application provided for in this Article

October 28,2021

Intellectual High Court Case No. 2020 (Gyo-ke 10005) on November 10, 2020 (Presiding Judge TAKABE)

 

Overview

 
1. The scope of the claim

Interleaving paper for glass plates, which is produced from wood pulp as a raw material, wherein an amount of silicone contained in the paper is 0.5 ppm or less relative to absolute dry mass of the paper.

 
2. Excerpt from the Judgement

An invention stated in the description etc. of the prior application, as referred to in Article 29-2 of the Patent Act, is construed as an invention which is understood from a matter stated in the description etc. of the prior application and from a matter equivalent to that stated in the description etc. of the prior application. The “matter equivalent to that stated” means a matter which can be derived from the stated matter by taking into consideration the common general technical knowledge at the time of filing.

Thus, even if there is no particular recitation in the description etc. of the prior application, the Invention of the Prior Application can be found taking into consideration the common general technical knowledge of a person ordinarily skilled in the art in order to understand the Invention of the Prior Application. On the other hand, in the case where an invention lacks concreteness, or technical content of an invention is insufficiently disclosed even taking into consideration the common general technical knowledge of a person ordinarily skilled in the art, such invention does not fall under the “invention” mentioned above and does not have an effect of excluding the later application provided for in this Article. Further, created technical content which is not configured to the extent that any person having ordinary knowledge and experience in the art can repeatedly work the technical content to achieve an intended technical effect is not yet a completed “invention” and it should not be deemed that such technical content falls under the “invention” as referred to in Article 29-2 of the Patent Act.

Considering this point in the present case, the Invention of the Prior Application, in which the contained amount of an organosilicon compound which is silicone, polydimethylsiloxane, in glass-interleaving paper is set to 3 ppm or less, preferably 1 ppm or less and 0.05 ppm or more, can significantly reduce defects in wiring etc. due to the organosilicon compound which is transferred from the glass interleaving paper to a glass plate, and in particular, can prevent polydimethylsiloxane from being transferred to a glass plate, easily causing the occurrence of defects in wiring, electrodes, etc., and thus achieves the intended effect of the Invention of the Prior Application; and such glass-interleaving paper can be produced by using pulp produced without using a polydimethylsiloxane-containing defoamer as a raw material, and by washing the pulp, washing paper by showering, washing using a water tank, or by two or more of these methods in the production process of glass-interleaving paper.

Then, it should be deemed that the Invention of the Prior Application was configured to the extent that any person having ordinary knowledge and experience in the art can repeatedly work the created technical content to achieve the intended technical effect.

Thus, the Invention of the Prior Application falls under the “invention” as referred to in Article 29-2 of the Patent Act and cannot be deemed to be incomplete. Therefore, the Invention of the Prior Application has an effect of excluding the later application which is identical to the Invention of the Prior Application pursuant to Article 29-2 of the Patent Act.

 
3. Further Consideration

The “invention” as referred to in Article 29, paragraph 1, which is based on judgement of novelty and inventive step and the “invention” as referred to in Article 29-2, should be an “invention” which has an effect of excluding the later application. However, in view of the above-mentioned purpose, there are many court cases which deemed that it is not necessary for the above-mentioned “invention” to meet the requirements set forth in the first sentence of Article 29, paragraph 1 of the Patent Act.

 

Writer: Hideki TAKAISHI

Supervising editor: Kazuhiko YOSHIDA

 

Contact information for inquiries: h_takaishi@nakapat.gr.jp

 

Hideki TAKAISHI

Attorney at Law & Patent Attorney

Nakamura & Partners

Room No. 616, Shin-Tokyo Building,

3-3-1 Marunouchi, Chiyoda-ku

Tokyo 100-8355, JAPAN

 

 
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