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IP Court Case Summary “H21(Gyo-ke) 10175”: IP High Court Vacated BA’s Decision that Claim Correction Was Invalid
 
On January 28, 2010, the Japanese Intellectual High Court vacated the Board of Appeal’s Decision and decided that the claim correction in which claim language “a regenerative under-floor heating system for a super insulated house” was changed to “a regenerative under-floor heating system for a super insulated house with a heat loss coefficient of 1.0 to 2.5 kcal/m²・h・°C” was valid.  The numerical limitations “1.0 to 2.5 kcal/m²・h・°C ” were not included in the original application.
 
In the decision, the court said as follows:
 
The Japanese Patent Article 17bis(3) states that “any amendment shall be made within the scope of the features described in the description, claims, and/or drawings originally attached to the application.”  This article was provided to (a) guarantee fairness between applications in which inventions are fully disclosed and applications in which inventions are not fully disclosed and (b) prevents others who acted upon considering the original disclosures of the patent from suffering unexpected losses.
 
An invention is defined as a technical idea using natural laws and is composed of a combination of technical features to solve the problems.  The “”features” described in the original specification etc.” in the Article 17bis(3) should be the technical features related to the invention disclosed in the originally filed specification etc.  If the amendment is construed not to introduce any new technical feature in light of the technical features comprehensively derived from the disclosures of the specification, claims, and drawings, it should be understood that it was made within the range of disclosures of the specification, claims, and drawings and then does violate the Article 17bis(3).
 
The Japanese Patent Article 36(5), on the other hand, states that “the claim shall recite all features necessary for specifying the invention for which the applicant requests the grant of a patent.”  This article was revised in 1994.  Before the revision, the corresponding Article 36(5)(ii) stated that “claim shall set forth only the features indispensable for the constitution of the invention”.  This means that before the revision the claim was prohibited from including any technical feature not indispensable for the constitution of the invention, but the after the revision the claim is permitted to include features necessary not only for specifying and but also for describing the invention.  This results in that amendments not only for adding indispensable features but also adding supplemental languages relating the invention may be made to the claims.
 
In view of the foregoing, a determination whether the amendment was made within the range of originally disclosed in the specification etc. under the Article 17bis(3) should be made by considering whether the technical features added by the amendment contribute to the solving of the problems to be solved by the invention, rather than simply by comparing between the added languages and the original disclosures.
 
In considering a technical significance of the claim language “a regenerative under-floor heating system for a super insulated house with a heat loss coefficient of 1.0 to 2.5 kcal/m²・h・°C ” to the invention, the numerical limitations formally restrict the scope of the invention but it is hard to say that they include any technical features that contribute to the solving of the problems to be solved by the invention in light of calculation inaccuracy of the heat loss coefficient.  Rather, it is rational to understand that the language indefinitely indicates the subject of the invention.  Also, an acceptance of such claim amendments would not violate the above-described purpose (a) or (b) of the Article 17bis (3), meaning that no problem would occur even if the added features (numerical limitations) were thought to be disclosed in the original specification etc.
 
http://www.courts.go.jp/hanrei/pdf/20100128171342.pdf