受験番号：20IPL002============================================================================

設問1(2) Legal Validity of Procedure
As described in the above section (1)(iii), the Decision of Rejection dated July 8, 2011 issued in thesubject application indicates that the inventions according to Claims 1-18, 21-26, and 29-33 are notpatentable. Accordingly, no ground of rejection is identified in the Decision of Rejection with respect tothe invention according to Claim 19.
The amendments (“Subject Amendment”) by the Written Amendment dated November 14, 2011 aremade to overcome the grounds of rejection in the Decision of Rejection, as described in the above
section (1)(iv). As the appellant argued in the Written Appeal, it is considered that Claim 1 after Subject
Amendment (i.e., currently amended Claim 1) is made by rewriting previously amended Claim 19 that
recites Claim 1 before Subject Amendment (i.e., previously amended Claim 1), so as to specifically
include such a recitation in Claim 1 in an independent form.
In this regard, currently amended Claim 1 is made by cancelling previously amended Claim 1 andrevising previously amended Claim 19 as currently amended Claim 1. Accordingly, in view of anamendment to previously amended Claim 1, such an amendment is made to delete previously
amended Claim 1 and not to restrict the scope of claims. Thus, the amendment should not have been
dismissed on the basis of violation of requirements of independent patentability, as described above.
Moreover, the contents in previously amended Claim 19 are the same as those in currently amended
Claim 1. Even in view of an amendment to previously amended Claim 19, the amendment is not madeto restrict the scope of claims. Therefore, the Appeal Decision is inappropriate because it rejects
currently amended Claim 1, which is substantially previously amended Claim 19 that is not amended
except for renumbering of the number of claim, for the reason that the amendment was dismissed dueto violation of requirement of independent patentability.

The aforementioned argument by the defendant is not clear; however, if the argument is intended tostate that determinations which lack appropriateness may be allowed in some cases where prompt
prosecution or appeal procedures is required, such an argument by the defendant cannot at all beaccepted in view of ensuring due process of law in administrative cases. In addition, as determined in
the above section (2), it is apparent that the Dismissal of Amendment in the present appeal case wasmade inappropriately. Thus, the defendant’s argument cannot be accepted.

設問2(2) As set forth in Patent Law, Article 35(4), employers, etc.(hereinafter, simply “employers”) areallowed to specify, in their office regulations, etc., compensation for assignment of rights to obtain apatent of an invention made by employees, and if the specified rule is reasonable, it is sufficient to pay
the compensation specified by the employers. Whether or not the specified rule is reasonable should
be determined in consideration of: (a) whether it was discussed with employees when the rule for
deciding compensation was set forth; (b) whether the rule is disclosed; (c) whether opinions from
employees on calculation of compensation were heard; and (d) other conditions.
In view of the above, if the specified compensation by employers lacks procedures of theaforementioned (a) to (c) illustrated as points to be considered, it should be understood that paymentof compensation on the basis of the rule specified by the office regulations, etc. is not reasonable,
unless there are specific conditions, for example: employers hold a measure for protecting employee’sbenefits, which can be in place of the aforementioned procedures; an amount of compensation
calculated in accordance with the rule is more than sufficient to compensate the procedural
deficiencies.