1. An excerpt from the decision with regard to the addition of new matters (underline added)
…[T]o make an amendment limiting a structure to that comprising the specific combination of the three types of compounds selected from within a number of listed compounds (the “Amendment”) has to be considered to introduce new technical matters which are different from those described in the originally attached specification etc.…
2. Consideration of this case
With respect to the addition of new matters (requirements for amendments, corrections, and divisions), the following criteria indicated in the Solder Resist Case (the IP High Court Grand Panel Case No. 2006 [Gyo-ke] 10563) has been established:
The Court in this case followed the criteria mentioned above.
When determining whether new matters are added or not, the court recently tends not to require, unlike in the case of the determination on compliance with the support requirement, that descriptions in the specification are to be made in a manner such that those skilled in the art can recognize that the problem of the invention can be solved. However, when determining whether an amendment (including a correction; the same applies hereinafter) is made within the scope of the matters stated in the originally attached specification, the court tends to consider an amendment as an amendment adding new matters in the case where the amendment to state combinations of specific alternatives of several elements (e.g., several compounds) in patent claims as matters specifying the invention even in the case where such several elements are stated separately in different parts (e.g., different examples) of the originally attached specification.
In this case, the Court found that it is the addition of new matters to amend patent claims by stating a combination of several elements in the patent claims as matters specifying the invention. However, the court may reach the same conclusion in the case of an amendment to state a single element in patent claims as a matter specifying the invention. In other words, if an amendment, correction, or division of patent claims is permitted to be made by stating any single compound selected from within 100 types of compounds disclosed as additive in the originally attached specification, an applicant would tentatively list a number of possible compounds in the specification, and after viewing a competitor’s product, the applicant could make an amendment to state only the compounds used in the competitor’s product in the patent claims and thereby increasing the level of patentability (novelty, inventive step, description requirements, etc.) of its invention. (In fact, there are cases in which a divisional application filed in the aforementioned manner was accepted by the JPO, and the alleged infringer has difficulties in legal proceedings.)
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