Patent Japan

Friday, July 21, 2006

From Archives - Grand Panel case of IP High Court, “Parameter Case” (2)

The Court upheld the JPO’s decision and revoked the patent, by holding as follows;

1) For claims to be patented, their problem has to be understood from the specification by a person skilled in the art. Whether or not claims are supported is judged from the fact that a skilled person would recognize from the specification that the problem of the claimed inventions is solved, or, from the fact that he would recognize, irrespective of description or suggestion, in the light of the state of the art at the time of filing that the problem is solved. And the patent applicant has the burden to prove that the support requirement is met. In this case, the claim is a so-called a “parameter invention”, which is defined by a certain range using two parameters of its characteristics. For this type of claims to satisfy the support requirement, the technical relationship of the range defined by the equations and the effect to be achieved has to be understood by a skilled person irrespective of the disclosure of examples, or, the fact that intended effect would be achieved within the range has to be understood by examples so that he could recognize it in the light of the state of the art.

2) For parameter inventions as in this case to satisfy the support requirement, it has to be clearly understood from experimental results, not by merely speculations, that an alleged effect arises within the range defined by the equations. It is not permitted to submit experimental data after the filing in order to supplement what is disclosed in the specification and to extend or generalize it to the whole range of the claim.

3) Although the Patent Examination Guidelines is designed to give basic guides for patent examiners, and is also used for applicants as a prosecution management tool, it is merely a guideline to ensure impartiality and reasonability during the procedure in the Patent Office, but does not act as law as in the case of the “Examination Guidelines” in the meaning of Administrative Procedural Law. Therefore, what is stipulated in the Patent Examination Guidelines does not play decisive role for the interpretation of the Patent Law. Additionally, the revised Guidelines of October 2003 stipulates, as one type of support requirement violations, “a case where, even taking into account the technical knowledge at the time of the filing, it is not considered that the contents described in the specification could not be extended or generalized to the whole range of a claim.” It is clearly in line also with the old version of Section 36(6)(i), and it is not violation to apply this interpretation retroactively.

4) Based upon the above reasons, the patent is in violation of Section 36(6)(i), and accordingly it should be revoked. It is not necessary to consider the JPO’s decision in terms of Section 36(4).


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