Judgments of Intellectual Property High Court ( Grand Panel )Date of the Judgment: 2005.11.11
Case Number: 2005(Gyo-Ke)10042
Title(Case):
Judgment upholding a Decision of Revocation in an opposition procedure by the Patent
Office, in which the recitations of a claimed invention do not comply with statutory
requirement (support requirement) in Article 36, Paragraph 1, Item 5 of Patent Law
that was effective before the revision by Law No. 116 of 1994, with regard to aparticular mathematical formulation that includes two technical variables, or“parameters”, each of which denotes a characteristic of an element of the claim, which
is used in the claimed invention.
Related Statutory Provision(s):Article 36[(5)(i)] of the Patent Law, before the revision by Law No. 116 of 1994
(corresponding to Article 36 (6)(i) of the Patent Law, after the revision)
Summary of the Judgment:
I

Outline of the Case
1 Brief Summary of Facts
In the present case, a plaintiff who was a patentee of a patent titled“Manufacturing Methods of Polarizing Film” (hereinafter “the Patent”) alleged thatthe Decision of Revocation in the opposition procedure was erroneous and thus soughtreversal of the Decision based on Law No. 47 of 2003, Appendix Article 2(9). The
Decision of Revocation that had been issued by the Patent Office was based on failure
to meet the description requirements in the specification accompanied with the patentapplication in the opposition procedure that had been filed before the date ofenforcement of Law No. 47 of 2003, or January 1, 2004.

(In this summary,“specification” includes “claims” according to the statutory definition before therevision of Law No. 24 of 2002.)
The claimed invention of the Patent includes an element that is defined with arange limited by a particular mathematical formulation. This mathematicalformulation is expressed using two technical parameters, each of which denotes acharacteristic of the element of the claimed invention. Thus the present invention is a
so-called parameter invention.

In the present judicial review, what is at issue is thepermissibility of the specification disclosure, that is, whether the specification1

discloses the invention sufficiently, as set forth in Article 36 of the Patent Law, so thatthe invention is awarded monopolization and exclusivity.
2 Issues(1) With respect to Reason for Revocation 1A. (Fulfillment of support requirements)
Regarding the invention claimed in the specification accompanied with thepatent application, which is a so-called “parameter invention”, do claim recitations of
the application comply with statutory requirements of the Patent Law, Article
36(5)(i) ?

The requirement (hereinafter, “support requirement”) was revised by Law

No. 116 of 1994 (“patent revision of 1994”) to become Article 36(6)(i) of the PatentLaw.
B. (Legitimacy of addition to specification by submitting experiment data afterfiling)
When the above-specified issue A is negated, can a patentee-plaintiff assert
legitimacy as to the support requirement on claims by submitting additional
experimental data in the course of an opposition procedure for amending the detailed
description of the specification to include data that is not found in the original
specification?
C. (Legitimacy of ex post fact application of the Guidelines)
In the case that the “Guidelines” (the Examination Guidelines for Patent andUtility Model in Japan) regarding the examination of the description requirements arerevised after the filing date of the invention, is it permissible for the Patent Office toapply the Guidelines to the invention?
(2) With respect to Reason for Revocation 2
Does the detailed description in the specification comply with the statutory
requirements of the Patent Law, Article 36(4) before the patent revision of 1994?
II

Outline of the Judgment
The Court concluded that the plaintiff’s assertion presented in the Reason for

Revocation is not persuasive, because, with respect to issue (1), the recitations of aclaim of the present specification do not comply with the support requirements, andthus issue (2) is not necessary to discuss. Regarding issue (1), the Court held as
follows:2

1 With respect to A (Fulfillment of the support requirements of thespecification)(1) Whether the claim recitations fulfill the support requirements or not should
be determined by the following scheme: claim recitations are first compared with thedetailed description of the specification; then the fulfillment is determined according
to whether the claimed invention was described in the detailed description of theinvention, whether the claimed invention can be regarded as though the skilled personin the art could have figured out the invention based on its recitations, or whether theclaimed invention can be regarded as though the skilled person could have figured itout based on common technical knowledge at the filing date given that the recitations
were not included nor suggested [in the detailed description of the specification].

It

is the patentee to whom the burden of proof as to the support requirements is given to.
(2) An element of the present invention is a material that is limited in a range
determined by a particular mathematical formulation.

The mathematical formulation

includes two technical variables, or parameters, each of which denotes a characteristicof the element.

Specifically, the element is a poly-vinyl-alcohol based material film(“PVA film”) whose complete salvation temperature, X, and balanced degree ofswelling, Y, fall within a range that is denoted by a particular mathematicalformulation [of X and Y] . Thus, the present invention is a so-called parameter
invention. Claim recitations of such invention shall meet the support requirements if(i) the detailed description in the specification discloses a technical meaning in therelationship between the range denoted by the mathematical formulation and its effects,
or performances, at least in such a way that the skilled person is able to understand it
at the time of filing even if particular examples are not included in the specification;or (ii) [the detailed description] includes the disclosure of examples in a manner thatthe skilled person can recognize, by consulting the common technical knowledge at thetime of filing, that the intended effects, or performances, would have been realized
when [X and Y for the claimed invention fall within] the range denoted by themathematical formulation.
(3) The detailed description of the present specification includes only twoexamples and two comparative examples for showing the effectiveness of the abovestructure.

The examples merely show that polarizer films with considerable

durability and tolerance for high stretch rate are realized by PVA films with specificsets of complete salvation temperature, X, and a balanced degree of swelling, Y;
whereas, the comparative example merely show that polarizer films with poor
durability and poor tolerance for high stretch rates are realized by PVA films with3other specific sets of complete salvation temperature, X, and a balanced degree ofswelling, Y.

Therefore, such description does not disclose examples in such a waythat the skilled person can recognize, by consulting the common technical knowledge
at the time of filing, that the intended effects, or performances, would have beenrealized when the [numerical values of the characteristics for the PVA films] fallwithin the range [denoted by the mathematical formulation in the claim recitations].
Therefore, the claim recitations do not meet the support requirements.
2 With respect to B (Legitimacy of addition to specification by submitting
experiment data after filing)(1) With respect to the so-called parameter invention, notably the present
invention, if we take into consideration the fact that the detailed description, which
neither discloses the examples so specifically that the skilled person can recognize theproblem solved by the present invention, nor discloses [the invention] in such amanner that the [disclosure of] detailed description can be expanded or generalized
into what is recited in the claims by consulting the technical knowledge on the filing
date; then, under the objective of the patent system in which [sufficient] disclosure isassumed for any granted patent, it is not allowed that the [scope of the] detailed
description is expanded or generalized to what is recited in the claims for the purposeof satisfying the support requirements by submitting experimental data after the filing
date, wherein the data is new matter that not disclosed in the detailed description.
(2) The experimental data that has been filed by the plaintiff during theopposition procedure discloses (i) performance measurement results of polarizer film
obtained from PVA films of a specific set of [values for] complete salvation
temperature, X and a balanced degree of swelling, Y; and (ii) relationships between thepolarizer film performance and the set of [values for] complete salvation temperature,
X, and balanced degree of swelling, Y, for PVA films, wherein the relationships aredetermined based on the measurement results. Both of them have never been
disclosed specifically in the detailed description, thus they are disclosed nothing but
after the filing date. Therefore, in light of the above-mentioned (1), [suchexperimental data] are not allowed to be consulted [as grounds for the claimed
invention] because they are introducing new matter into the detailed description.
3 With respect to C (Legitimacy of ex post fact application of the Guidelines)(1) Whether the claim recitations meet the support requirements or not should
be determined by the objective of pertinent provisions of the Patent Law.

TheGuideline is not a law, but merely an examination standard which has been made in the4Patent Office for the purpose of ensuring equality and rationality in patentexaminations as to whether a patent application meets the patentability requirements
under the Patent Law.

Thus, the holding in 1(2) is not affected by whether or not thestandards in the Guideline that is applicable to the present invention includes theinterpretation of the above-mentioned provision of the Patent Law.
(2) Since the standards of the Guideline, which was revised in October 2002,
conform with the objective of Article 36 Paragraph 5 Item 1 of Patent Act before the2002 revision, which was revised in 1994, there is no violation of law even when thestandards are retroactively applied in an ex post fact manner to a patent that was filedbefore a filing date on which the revised standard went into effect.

（The copyright for this English material was assigned to the Supreme Court of Japan
by Institute of Intellectual Property.）5