Patent Japan

Thursday, August 24, 2006

From Archives – Claim Interpretation, "Lipase Case"

On May 8, 1991, the second panel of the Supreme Court, by vacating the decision of the Tokyo High Court, ruled on the interpretation of claim in "Lipase Case", 1987 (Gyo tsu) 3. This landmark decision is still being cited in many cases.

Here is the summary.
When examining novelty and inventive step (Patent Law Section 29 (1) and (2)), the content of a claimed invention has to be ascertained before comparing it with prior art. This should be based on the terms used in the claim, unless any special circumstances would arise. Only in the case such as where the terms of the claim cannot be understood clearly and unambiguously, or where the content of the claim is clearly false in the light of the detailed description, it would be permitted to refer to the detailed description.
In this case, since there are no limitations to the term "lipase" in the claim, nor any special circumstances such as above, the claim should not be interpreted to mean only "Ra lipase."

Note: You might think, at the first glance, that you could get a strong (broad) patent simply by using broader terms in claims. But this ruling specifically refers to “when examining novelty and inventive step,” which means that, not only it could be rejected/invalidated on the ground of clarity and/or support requirement, but it would also be more vulnerable vis-a-vis prior art. Moreover, it does not ensure the broader interpretation in the phase of enforcement. The golden rule - better to disclose various embodiments in order to secure a broad scope of claims - always applies.

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