Toshihiko Iwanaga

Introduction
Japanese patent practice is known as the strictest in the world in regard to the prohibition on adding new material. However, recently the Grand Panel of the IP High Court rendered a judgment that may alleviate the standard for prohibition on adding new material (H-18 (Gyo-ke) 10563, 30th May 2008).

In Japan, the Supreme Court examines points of law and not facts; thus, the determination of a case by the IP High Court is the final consideration of the case on the facts. The Grand Panel of the IP High Court, comprised of five judges, determines cases with a major social impact, so the determination of a case on the facts by the panel is given great importance.

Therefore, the fact that the Grand Panel of the IP High Court rendered a judgment of the scope of patent amendments demonstrates that the issue is of great public concern.

Adding new matter
So to what does the prohibition on adding new matter, which was at issue in this case, refer? It is a doctrine of preventing the addition of matters that are not disclosed in the original patent specification by subsequent amendment or correction. The doctrine was established because adding new matter is contrary to the first-to-file system.

Traditional standard for prohibition
Law
Article 17-2, Item 3 of the Patent Law stipulates that:

where an applicant makes an amendment of the specification, claims or drawings under Paragraph (1)… any amendment shall be made within the scope of the matters described in the specification, claims or drawings originally attached to the application.” 

A similar provision exists for the correction (Article 126, Item 3 of the Patent Law).

Concrete standard
The Japanese Patent Office (JPO) Examination Guidelines set down the concrete standard for the prohibition on adding new matter. They state that adding new matter is allowed within the scope of “matters which are explicitly described in the specification etc originally attached to the application” and “matters which are obvious from the description of the specification etc originally attached to the application”.

Problems
The prohibition doctrine is designed to balance the interests of the applicant and third parties, and as such the doctrine in itself is useful. However, the JPO handles the Examination Guidelines rigidly and often disallows the addition of matters other than those described in the specification originally attached to the application as obvious matters.

There may be cases where in Japan the scope of the right is narrow, while the rights in the European Patent Office (EPO) and the United States are broad, even though they are based on the same invention and the same specification. For this reason, applicants are sometimes critical, saying that the scope within which amendments and corrections may be made is too narrow compared to those allowed by the EPO and the US Patent and Trademark Office.

Recent judgment
In the recent case the IP High Court held that the “matter described in the specification or drawings” refers to technical matter that is introduced by integrating all of the descriptions of the specification or drawings. Where an amendment does not introduce new technical matter in connection with the technical matter that is introduced in this way, it can be said that the amendment is made “within the scope of the matters described in the specification or drawings”.

Thus, the question at issue is how to define “not introducing new technical matter”. In this respect, the IP High Court listed as examples cases where: 

  • the correction matter to be added is explicitly described in the specification or drawings; and 
  • the matter is obvious from the description.

These examples relate only to the “excluding claims” in question. Therefore, it is hoped that further examples will be laid down by future court decisions.

However, it can be seen that the IP High Court gave weight to the working effect of the invention when determining the technical matter – that is, not changing the working effect of the invention when making an amendment and a correction is a prerequisite for “not introducing new technical matter”. At this stage, the major justification for an amendment or correction is the existence of the description of a product or scope.

Thus, at this stage, the concrete meaning of “not introducing new technical matter” is construed as follows: 

  • The amendment and correction apply to a superordinate concept of a product or scope (any additions or deletions are allowed, regardless of the description); and 
  • The amendment and correction do not change the working effect of the invention.

Example
Therefore, following this definition of “concrete meaning”, the following amendment may be permitted.

Assume that the application at issue is an invention defined by a numerical limitation in the chemical field and a range of 5 per cent to 20 per cent of the additive is claimed. In addition, the description of 5 per cent to 20 per cent is also made in an example, while a prior application specification describes 10 per cent to 15 per cent of the additive as for the same invention.

Conventionally, where the present application does not describe thresholds of 10 per cent and 15 per cent, the amendment of claims to a range of 5 per cent to 10 per cent and 15 per cent to 20 per cent was not permitted, even for the purpose of avoiding similarity with the prior application invention. This was because it was neither explicitly described nor obvious, and the amendment constituted an addition of new matter.

However, in light of the recent judgment, such an amendment would not constitute an addition of new matter as: 

  • the description of a range of 5 per cent to 20 per cent (the superordinate concept) was present; and 
  • even if the range is divided into 5 per cent to 10 per cent and 15 per cent to 20 per cent precisely, this does not change the working effect of the invention, which falls under “not introducing new technical matter”.

Conclusion
Thus, in light of the IP High Court’s decision, where an amendment and a correction “do not introduce new technical matter”, it is now worth applying to implement such an amendment and correction.

For further information please contact:

Toshihiko Iwanaga
Uchida & Samejima Law Firm
www.uslf.jp
Email: iwanaga@uslf.jp
Tel: +81 3 5511 6211