With regard to an amendment of the description etc., the “Solder Resist” Case (the IP High Court Grand Panel Case No. 2006 [Gyo-ke] 10563) (in which the court maintained the JPO’s decision which approved a correction to exclude matters stated in the originally attached description etc. by using a negative expression, such as “excluding” [which is generally referred to as a “disclaimer”], found that the patented invention does not fall under the provision of Article 29-2 of the Patent Act, and dismissed the request for a trial for invalidation) set the following criterion for judgment: “…the ‘matters stated in the description or drawings’ mean technical matters that a person skilled in the art can understand, taking into account all statements in the description or drawings. Where an amendment does not add any new technical matters to the technical matters that can be understood in this manner, the amendment can be deemed to be made ‘within the scope of the matters stated in the description or drawings'”.
The foregoing criterion for judgment has been followed by subsequent lower courts not only in the case of a disclaimer but also cases of corrections or revisions of claims.
Consequently, a practical issue will be what “an amendment [that] does not add any new technical matters to the technical matters that can be understood in this manner” is. The important things are factors to be taken into account in determining whether or not an amendment or correction is permitted in the case where, after an examiner’s decision to grant a patent is rendered, a divisional application for an invention is filed to enlarge the scope of the invention by deleting part of the matters specifying the invention (constituent features), or in the case where examples (drawings) in a patent specification are abstracted and described in claims.
On this point, the examination guidelines of the JPO describe that “…if the amendment does not introduce any new technical matter in view of the ‘matters stated in the originally attached description etc.,’ the amendment shall be permitted. … For example, in the case where a matter to be deleted is not related to a problem to be solved by the invention and is obviously an optional additional matter from the statement in the originally attached description etc., the amendment does not add any new technical significance in many cases“, and thus places high importance on the relation to the problem to be solved by the invention.
Further, Annex A to the Examination Guidelines describes “Case 7: Conversion into generic concept―amendment deleting the terms of claims” as an example of a permitted amendment in which the term “…a concave molding surface…” is amended to the term “…a concave molding surface…”. Consequently, the amended claim of Case 7 covers both “a concave molding surface” and “a convex molding surface”.
In Case 7, there is the following explanation: “[Explanation] The problem to be solved by the invention of the present application is to provide a mold for optical elements with superior mold release properties and durability under high temperature by improving the coating membrane coating the surface of the molds for optical elements, and the shape of the molding surface of the mold for optical elements is not directly relevant to the solution of the problem. Therefore, the shape of the molding surface of the mold cannot be deemed to be an indispensable factor as a means for solving the above problem, and is an arbitrary additional factor for the claimed invention and does not introduce any new technical matter.”
As can be seen from the above explanation, the relevance to the problem to be solved by the invention is conclusive. (In the case where the terms of claims before and after the amendment and drawing [see below] are exactly the same as those in Case 7, if the problem to be solved by the invention is to “store a liquid on a concave molding surface”, the amendment would not be accepted because the amendment would be adding new matters.)
Drawing of Examples
When overviewing lower courts’ cases after the IP High Court Grand Panel Decision of the “Solder Resist” Case including this case (the “Fluid Pressure Cylinder and Clamp Device” Case), they are generally consistent with approaches taken in the Examination Guidelines.
(In this case, by the amendment, a component of the invention that “a valve seat against which the valve body can contact, a fluid pressure introduction chamber that keeps the valve body in an advanced state toward the output member by means of fluid pressure in the fluid chamber, and a fluid pressure introduction passage that communicates together the fluid chamber and the fluid pressure introduction chamber” was deleted, and instead, a component that “an elastic member that keeps the valve body in an advanced state toward the fluid chamber by elastically energizing the large-diameter shaft section of the valve body toward the fluid chamber side” was added.)
The decision of this case is considered to follow the trend that an amendment etc. for deleting or abstracting components directly relevant to “the problem to be solved by the invention” is deemed to add new matters and is not permitted.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
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Hideki TAKAISHI (The person in charge of this article)
Attorney at Law & Patent Attorney
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