【PATENT★】”COMPOSITIONS COMPRISING 2,3-DICHLORO-1,1,1-TRI- FLUOROPROPANE, 2-CHLORO-1,1,1-TRIFLUOROPROPENE, 2-CHLORO-1,1,1,2- TETRAFLUOROPROPANE, OR 2,3,3,3-TETRAFLUOROPROPENE” Case: A case in which the Court found that an amendment is considered to have added new matters (violation of requirements for amendments) on the grounds that there is no description of the reason for the necessity of the specific combination of three types of compounds which are separately described in the specification.

December 27,2021

―Tokyo District Court Case No. 2019 (Wa) 30991 of March 3, 2021 (Presiding Judge Koichi TANAKA)

【Summary and consideration of the judgment rendered in this case】

1. An excerpt from the decision with regard to the addition of new matters (underline added)

…[I]n the originally attached specification, although HFO-1234yf, HFO-1243zf and HFC-245cb are described separately, they are not described as a specific combination of the three different types of compounds, and there is no description of the reason for the necessity of such a specific combination of the three types of compounds. Further, in the originally attached specification, eight types of compounds and an “unknown” component are shown in TABLE 6 (Example 16), but there is no description of the reason for focusing on “245cb” and “1234yf”.

…[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.…

TABLE 6

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 “matters stated in the originally attached specification, claims, or drawings” mean technical matters that a person skilled in the art can understand, taking into account all statements in the specification, claims, 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 specification, claims, or drawings” from the viewpoint of preventing a third party from suffering unexpected disadvantages and ensuring equity between a patentee and a third party.

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.)

Writer: Hideki TAKAISHI

Supervising editor: Kazuhiko YOSHIDA

Contact information for inquiries: h_takaishi@nakapat.gr.jp

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

<< Prev　　　 Next >>