1. Excerpts from the Judgement (the “Image Forming Apparatus” case Judgement ) （the normative judgement part + the judgement part of application to the case）
“Since the specification at the time of the divisional filing of the application 2 includes matters not included in the specification at the time of the filing of the application 1, it cannot be said to be within the scope of the matters described in the specification at the time of the filing of the application 1.” In that case, since Application 2 does not satisfy the divisional requirement in … (ⅱ), it is in violation of the divisional requirement…”
2. (Although it was not an issue in this case,) if the amendment was made after the filing of the child application ⇒ retroactive effect is possible.
3. Difference between divisional requirements and amendment requirements ⇒Same requirements in prior court cases
4. Effect on grandchild applications of final decision of refusal, final decision of invalidation, or withdrawal of a child application ⇒ None
5. Consideration [general consideration] (Measures to be taken when a child application is rejected for adding new matter)
In light of the prior court cases, when a child application is received a Notice of Reason for Refusal on the ground of addition of new matter, the response to the Notice of Reason for Refusal should never be left unexecuted when it is further divided into a grandchild application, and even if the child application is finally refused, an amendment should be made to eliminate the reason for refusal for addition of new matter. (The Tokyo High Court Case No. 75 (Gyo-ke) 1975, held that the amendment is possible.)
6. Consideration [regarding this case]
Generally, it is a typical case that an invention described in the claims in the specification at the time of division (including by retroactive effect of amendment or correction) is recognized as a violation of the divisional requirement/addition of new matter because it is not disclosed in the specification of the parent application, and a violation of the divisional requirement/addition of new matter by adding the detailed description of the invention in the specification at the time of filing the divisional application is rare.
In this regard, although the case was a domestic priority claim case, the Tokyo High Court decision No. 539 (Gyo-ke) 2002 [Artificial Nipple Case] is common in that it was held as an addition of new matter because an example was added to the specification when the domestic priority right was claimed (the claims were not changed). Although there is a difference in that this case was at the time of a divisional application and the artificial nipple case was at the time of a domestic priority claim, they are common and very unusual in that the addition to the detailed description of the invention was to be an addition of new matter.
Since the decision in the artificial nipple case, there had been no court case in which it was held that an addition to the detailed description of the invention constitutes an addition of new matter in case there is no change in the scope of claims until this court case. However, based on this case, it may be necessary to revise the divisional application strategy.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
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