Tokyo District Court Judgement on the SPREADER FOR OSTEOTOMY Case ~ As to lnterpretation and Application of 5th Requirement of the Doctrine of Equivalents ~

Author: Kei IIDA (Mr.), attorney at law & patent attorney
Journal: Patent Study No.68
Publisher: INPIT
Publication date: September, 2019
Overview: Concerning the fifth requirement of the doctrine of equivalents, particularly with regard to the “special circumstances” not to apply the doctrine at the time of patent application in relation to  the non-amended and non-corrected claim language, in the Maxacalcitol case, the Supreme Court recently denied the view of finding “special circumstances” across the board for items having the same effect that could have been easily conceived at the time of patent application, and adopted the Objective External Manifestation theory, upholding the Japanese-version theory of dedication. The subject judgment, which is the first judgment after the Supreme Court judgement on the Maxacalcitol case concerning, in particular, the “special circumstances” at the time of amendment or correction in relation to the amended or corrected claim language, is significant in that the court did not take the broad interpretation that the “special circumstances” are found simply because of the fact of the restrictive amendment or correction, but the narrow interpretation not finding the “special circumstances” simply because of the fact, and then did not find the “special circumstances” in the case at the time of amendment in relation to the amended  claim language.
In this context, in consideration of the Supreme Court judgement on the Ball Spline case that first upheld the doctrine of equivalents and established the requirements of the doctrine, and on the Maxacalcitol case stated above, it can be understood that the “doctrine of estoppel” is the sole legal ground for the entire “special circumstances.” Then, in light of the comprehensive and general criteria for the “special circumstances” in consideration of the doctrine of estoppel in the Civil Code that is the basis for the “doctrine of estoppel” and the rulings by the Supreme Court on the Maxacalcitol case stated above, the subject judgment, which adopted the narrow rather than the broad interpretation, can be considered appropriate. Further, the subject judgment is considered to be on the purpose, purport, significance, details, etc. of the restrictive amendment from the objective and external point of view, and not on the subjective purpose of the restrictive amendment of the applicant. In this context, the subject judgment for denying the “special circumstances” in the case according to the narrow interpretation is also considered appropriate.

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