Excerpts from the Judgment, and Some Considerations
1. Scope of the Claim (Claim 1)
“At least one watertight compartment (excluding tanks)”
2. Concerning “Disclaimer” and Addition of New Matters (Requirements for Corrections)
“… Since a ‘Watertight Compartment’ is permitted to have the function of a tank, it is recognized that there are two types of ‘Watertight Compartment’: one type that also has the function of a tank, and one that does not serve as a tank. There is no reason to conclude that by correcting the invention, the invention does not have the effect of this patented invention and does become an invention that has a new effect.
3. Concerning “Disclaimer” and Inventive Step
The court, in line with the three previous cases that recognized an “inventive step” through a “disclaimer”, recognized an inventive step based on the logic that excluding a configuration that is a problem-solving principle of the main cited invention or is a premise of the main cited invention would create an encumbrance.
Specifically, the court found that replacing a “watertight compartment” that also has the function of a tank in the main cited invention with a “watertight compartment” that does not have the function of a tank would imply that a new space is required to accommodate the tank, and also that the location that was previously available for use as a tank could no longer be used as a tank, thus creating an obstructing factor.
4. Some Considerations (Relationship between addition of new matters in “Disclaimer” and determination of an inventive step)
Although this is the fourth court case in which an inventive step was recognized by a disclaimer, each year more than 1,000 cases of “disclaimer” are granted at the examination stage and the trial stage by the JPO.
As in the three previous cases that recognized “inventive step” through a “disclaimer,” this decision also held that, in the context of recognizing an inventive step, excluding a specific configuration in relation to the problem of the main cited invention is grounds for an obstructing factor.
On the other hand, as in many other court cases, this judgment, in the context of the decision as satisfying the correction requirement as not adding new matter, it is held that the effect of the invention is not changed by the correction of the “disclaimer”.
Thus, a “disclaimer” is subject to a twist, in that the relationship with the problem for the invention in question becomes an issue when judging the addition of new matter, whereas when judging an inventive step, the relationship with the subject matter of the cited invention becomes and issue, which some say is too useful for the rights holder.
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