News & Topics

Intellectual Property High Court (IPHC) ruling regarding the prohibition of adding new matters in disclaimer claims

1. Background
   The Plaintiff is the patentee for the invention titled “compositions comprising 2,3-dichloro-1,1,1-trifluoropropane, 2-chloro-1,1,1-trifluoropropene, 2-chloro-1,1,1,2-tetrafluoropropane, or 2,3,3,3-tetrafluoropropene” (Patent No. 6585232, hereinafter referred to as “the present patent”). A divisional application was filed on May 28, 2018 (Original filing date: May 7, 2009; Priority claim under the Paris Convention: May 7, 2008, United States of America), and a patent was registered as the present patent on September 13, 2019.
   The Defendant filed a request for an invalidation trial of the present patent (the number of claims: 7) on September 18, 2020. The Japan Patent Office (JPO) examined this request as the case of Invalidation Trial No. 2020-800082. Then, the JPO gave an advance notice of a trial decision on October 13, 2021. The Plaintiff filed a request for correction (hereinafter referred to as “the present correction”) on January 17, 2022, requesting that the claims of the present patent be corrected. However, the JPO decided that the present correction cannot be allowed, and rendered a trial decision that “the patent for the inventions according to Claims 1 to 7 of Patent No. 6585232 shall be invalidated” (hereinafter referred to as “the present trial decision”) on August 16 of the same year. The Plaintiff filed the present suit on December 15 of the same year.

2. Inventions of the Present Patent
   Claims 1 to 7 of the present patent before the present correction are as follows:
   [Claim 1]
   A composition comprising HFO-1234yf, HFC-254eb, and HFC-245cb.
   [Claim 2]
   Use of the composition according to Claim 1 as a refrigerant.
   [Claim 3]
   Use of the composition according to Claim 1 as a refrigerant in air conditioners, freezers, refrigerators, heat pumps, water chillers, flooded evaporator chillers, direct expansion chillers, centrifugal chillers, walk-in coolers, mobile refrigerators, mobile air-conditioning units, and combinations thereof.
   [Claim 4]
   Use of the composition according to Claim 1 as an aerosol propellant.
   [Claim 5]
   Use of the composition according to Claim 1 as a foaming agent.
   [Claim 6]
   A method of using the composition according to Claim 1, wherein the composition comprises a composition that transfers heat from a heat source to a heat sink.
   [Claim 7]
   A method of using the composition according to Claim 1 as a refrigerant in a cycle comprising a composition that undergoes a phase transition from a liquid to a gas and returns.

3. Content of the Present Correction
   The recitation “A composition comprising …” in Claim 1 is corrected to be “A composition comprising … (except for a composition comprising 1% by weight or more of HCFC-225cb)” (Correction Matter 1). The same correction applies to Claims 2 to 7 that depend from Claim 1.

4. Trial Decision by the JPO
   In order that the correction of a so-called “disclaimer” with a numerical range limitation as in the present correction does not add a new matter, it can be interpreted to require that an “excepted” matter can be deemed to exist; i.e., it can be interpreted to require that the invention according to Claim 1 before the correction (hereinafter referred to as “Present Invention 1”) can be deemed to include “a composition comprising 1% by weight or more of HCFC-225cb”, or it can be interpreted to require that even if an “excepted matter” does not exist, Present Invention 1 can be deemed to include “a composition comprising less than 1% by weight of HCFC-225cb” because it will be explicitly indicated that the invention according to Claim 1 after the correction (hereinafter referred to as “Present Corrected Invention 1”) includes “a composition comprising less than 1% by weight of HCFC-225cb.”
   Thus, it can neither be deemed that Present Invention 1 includes “a composition comprising 1% by weight or more of HCFC-225cb”, nor that Present Invention 1 includes “a composition comprising less than 1% by weight of HCFC-225cb.”
   According to the foregoing, Correction Matter 1 introduces a new technical matter in relation to the matters disclosed in the description, claims, or drawings attached to the request for a patent application, and falls under the addition of a new matter, thus violating the provision of Article 126, paragraph (5) of the Patent Act as applied mutatis mutandis under Article 134-2, paragraph (9) of the same Act. Therefore, the present correction cannot be allowed.

5. Decision of the IPHC
5-1. Interpretation of Requirement of Correction
   A correction of the claims etc. must be made “within the scope of the matters disclosed in the description, claims, or drawings attached to a request for a patent application” (Article 134-2, paragraph (9) and Article 126, paragraph (5) of the Patent Act). This can be interpreted as requiring that the invention be fully disclosed at the time of originally filing a patent application to thereby ensure prompt grant of a patent and also to prevent unforeseen disadvantages to third parties who act on the premise of the scope of the invention disclosed at the time of filing the patent application. It is reasonable to interpret that “matters disclosed in the description, claims, or drawings attached to a request for a patent application” means technical matters that can be derived by a person ordinarily skilled in the art after taking the entire disclosure of the description, claims, or drawings into overall consideration (hereinafter merely referred to as “the original technical matters”). In a case where a correction does not introduce any new technical matters in relation to the original technical matters, it can be deemed that the correction is made “within the scope of the matters disclosed in the description, claims, or drawings.”

5-2. Compliance with Requirement of Correction
   The present description, etc. describes compositions comprising HFC-254eb and HFC-245cb as well as other compounds in the process of preparing HFO-1234yf. However, the present description, etc. does not describe anything about HCFC-225cb. In addition, according to the present description, etc., it cannot be recognized to be obvious to a person ordinarily skilled in the art that the composition comprises HCFC-225cb due to HCFC-225cb generated as a by-product in the process of preparing HFO-1234yf or HCFC-225cb contained as an impurity in HFO-1234yf or its raw materials. Thus, even taking the present description, etc. into the overall consideration, a person ordinarily skilled in the art cannot derive the technical matter of including HCFC-225cb in Present Invention 1.
   Present Corrected Invention 1 is “A composition comprising HFO-1234yf, HFC-254eb, and HFC-245cb (except for a composition comprising 1% by weight or more of HCFC-225cb).” By the present correction, a composition comprising 1% by weight or more of HCFC-225cb has been excepted from Present Invention 1. However, the present correction cannot be deemed to cause any change in the technical matters concerning Present Invention 1 described in the present description, etc. Thus, the present correction has not added a new technical matter to the technical matters disclosed in the present description, etc.

5-3. As to Assertion by Defendant
   The Defendant asserts that the present correction cannot be deemed to be a correction excepting a portion identical to the invention of Exhibit Ko 4 and cannot be allowed, because the disclaimer does not fall under “a correction excepting a portion identical to an invention of a prior application from an invention claimed in a patent application.” However, when a correction of the claims is made in accordance with Article 134-2, it is not further required to except only a portion identical to an invention of a prior application nor to except only a portion identical to the prior art that was known prior to the filing of the patent application. In addition, when a correction is made “within the scope of the matters disclosed in the description, claims, or drawings”; that is, when a correction does not introduce a new technical matter in relation to the original technical matters, it cannot be expected that the correction will cause unforeseen damage to third parties. Thus, as an interpretation of the correction requirement stipulated in the same paragraph, it is deemed to be unreasonable to add the requirements as asserted by the Defendant.

5-4. Conclusion
   The present trial decision did not allow the present correction on the grounds that the correction introduces a new technical matter, and invalidated the present patent for the present invention. However, the present correction cannot be deemed to introduce a new technical matter as mentioned above. Therefore, it is inescapable to rescind the present trial decision on the grounds that the present trial decision erred in the interpretation of the correction requirement stipulated in Article 126, paragraph (5) of the Patent Act as applied mutatis mutandis under Article 134-2, paragraph (9) of the same Act.

6. Comments
   In this decision, the IPHC held the interpretation of the prohibition of adding new matters as the requirement of correction. The IPHC held that it is reasonable to interpret that the phrase “matters disclosed in the description, claims, or drawings attached to a request for a patent application” means technical matters that can be derived by a person ordinarily skilled in the art after taking the entire disclosure of the description, claims, or drawings into overall consideration. The IPHC held that in a case where a correction does not introduce any new technical matters in relation to the original technical matters, it can be deemed that the correction is made “within the scope of the matters disclosed in the description, claims, or drawings.” This point was similarly held in the Solder Resist grand panel decision (the IPHC Decision May 30, 2008 / 2006 (Gyo-ke) No. 10563). Based on this grand panel decision, the JPO’s examination guideline was revised on June 1, 2010.
   Moreover, as for the compliance of this correction, the IPHC stated: “Even taking the present specification, etc. into overall consideration, a person ordinarily skilled in the art cannot derive the technical matter of including HCFC-225cb in Present Invention 1”. Then, the IPHC held, “By the present correction, a composition comprising 1% by weight or more of HCFC-225cb has been excepted from Present Invention 1. The present correction cannot be deemed to cause any change in the technical matters concerning Present Invention 1 described in the present description, etc. Thus, the present correction has not added a new technical matter to the technical matters described in the present description, etc.”
   Regarding this point, the Solder Resist grand panel decision held that “Even in cases where the amended matter is negatively described, such as an amendment of a “disclaimer”, if the amended matter is a matter described in the description, etc., in the same way as when making a positive amendment, unless there are special circumstances, no new technical matter is introduced. Conversely, just because the amended matter itself is not described in the description, etc. it does not mean that the amendment introduces any new technical matter.”
   On the contrary, the Defendant asserted that the Solder Resist grand panel decision held that a correction excepting a portion identical to an invention of a prior patent application may not fall under the category of adding new matters, and the present correction cannot be deemed to be a correction excepting a portion identical to an invention of a prior application.
   However, the IPHC held that: “when a correction of the claims is made in accordance with Article 134-2, it is not further required to except only a portion identical to an invention of a prior patent application nor to except only a portion identical to the prior art that was known prior to the filing of the patent application”, and “when a correction is made ‘within the scope of the matters disclosed in the description, claims, or drawings’; that is, when a correction does not introduce a new technical matter in relation to the original technical matters, it cannot be expected that the correction will cause unforeseen damage to third parties.” Thus, the Defendant’s assertion was not accepted.
   In the future, it will be important to refer to the findings of this decision regarding the propriety of corrections that involve limitation of numerical ranges using a “disclaimer.” Furthermore, since the prohibition of adding new matters is a requirement of amendments as well as a requirement of correction, it will be important to similarly refer to the findings of this decision regarding the propriety of amendments. Regarding the interpretation of the requirements for prohibiting the addition of new matters, it is important to watch future trends in judicial precedents.

https://www.ip.courts.go.jp/app/files/hanrei_jp/409/092409_hanrei.pdf