Case number

2006 (Gyo-Ke) 10563

Parties[Plaintiff] Tamura Kaken Corporation[Defendant] Taiyo Ink MFG. Co., Ltd

Decided on

May 30, 2008

DivisionGrand PanelHoldings:-Where a correction does not add any new technical matters to the technicalmatters that a person skilled in the art can understand, taking into accountall statements in the description or drawings, such correction can bedeemed to be made within the “scope of the matters stated in the description-or drawings.”
A correction to revise the initial claim into an “excluding claim” can bedeemed to be made within the “scope of the matters stated in the description
or drawings.”-A registered trademark mentioned in a correction can be deemed to cover
all products that could be identified by the registered trademark at the timeof filing of the prior application, and therefore, the products identified by theregistered trademark cannot be regarded as being technically unclear.

-It cannot be deemed to be in violation of the Ordinance for Enforcement of
the Patent Act, when making a correction to revise the initial claim into an“excluding claim,” to indicate the parts to be excluded by using a registeredtrademark.

-The invention claimed in the patent application in question would not havebeen easily inferred by a person skilled in the art based on the invention
disclosed in the cited prior application.

References:
Proviso to Article 134(2) of the Patent Act prior to revision by Act No. 116 of1994 (corresponding to Article 134-2(1)(iii) and (5) and Article 126(3) of theexisting Patent Act), Article 24 of the Ordinance for Enforcement of the PatentAct prior to revision by Ordinance of the Ministry of International Trade andIndustry No. 41 of 1990 (Form 16), Article 29(2) of the Patent Act prior torevision by Act No. 41 of 1999 (corresponding to Article 29(2) of the existing1Patent Act)
I. Outline of the Case
The plaintiff filed a request to the Japan Patent Office (JPO) for a trial forinvalidation of Patent No. 2133267 entitled “Photosensitive thermosetting resin
composition and method of forming solder resist pattern by use thereof”(hereinafter referred to as the “Patent”) that the defendant holds. The inventions
subject to the trial were those defined by Claim 1 and Claim 22 included in thedescription attached to the application of the Patent (hereinafter referred to as
the “Description”; these inventions shall hereinafter be referred to as the “InitialInventions”). The JPO made a decision to the effect that the Patent should beinvalidated (hereinafter referred to as the “Preceding JPO Decision”).
The defendant filed an action to seek cancellation of the Preceding JPO
Decision (hereinafter referred to as the “Preceding Suit”). Subsequently, thedefendant filed a request for a trial for correction, and the Intellectual Property
High Court (hereinafter referred to as the “Court”) made an order to cancel thePreceding JPO Decision.
In this case, the plaintiff seeks cancellation of another JPO decision thatapproved the correction of the Description (hereinafter referred to as the“Correction”) and dismissed the request for a trial for invalidation.
II. Gist of the JPO Decision
The JPO decision, while finding the Initial Inventions to be identical to theinvention disclosed in the description attached to the prior application(hereinafter referred to as the “Cited Invention”), determined that the Correction
was made within the scope of the matters stated in the description and for thepurpose of restricting the scope of claims or clarifying an ambiguous statement,
and that the Correction did not substantially enlarge or alter the scope of claims.
In conclusion, the trial decision approved the Correction.
The JPO decision also determined that the Patent should not beinvalidated because: the inventions after the Correction (hereinafter referred toas the “Present Inventions”) would not have been easily inferred based on theinvention disclosed in the cited prior application (hereinafter referred to as the“Invention Based on Exhibit Ko No. 3”); according to the statements in theDescription, the Present Inventions were not incomplete and the statements inthe Description were not insufficient.

2III. Major Issues
1. Legality of the Correction(1) “Excluding claim”
The Correction revised the initial claims into “excluding claims” [a claim
containing a negative expression, such as “excluding…”]. Can it be deemed tohave been made “within the scope of the matters stated in the description ordrawings”?
(2) Use of the registered trademark
As a result of the Correction, the registered trademark, “TEPIC,” isadditionally stated in the claims. Can the products be deemed to be clearly
identified by means of the registered trademark? (Can the Correction bedeemed to be intended to “restrict the scope of claims”?)
2. Inventive step in the Present Inventions
IV. Gist of the Holdings of the Court
1. Legality of the Correction(1) “Excluding claims”
Before determining whether or not it is allowable to correct an initial claim
by revising it into an “excluding claim,” the Court indicated the following generaltest for determining the satisfaction of the requirement for correction prescribedin the Patent Act, i.e. a correction shall be made “within the scope of mattersstated in the description or drawings.”
The “matters stated in the description or drawings” are disclosed to third
parties by the applicant as a prerequisite for gaining a monopoly based ona patent right for an invention, the highly advanced creation of technicalideas, and such “matters” must be technical matters concerning theinvention disclosed in the description or drawings. And the “matters statedin the description or drawings” mean technical matters that a person skilledin the art can understand, taking into account all statements in thedescription or drawings. Where an amendment does not add any newtechnical matters to the technical matters that can be understood in thismanner, the amendment can be deemed to be made within the “scope ofthe matters stated in the description or drawings.”

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Based on this reasoning, the Court clearly stated that this general test also
applies where the patentee files a request for correction to exclude the relevant
part of the invention claimed in the patent application that is identical to theinvention claimed in a prior application, which had not yet been laid open at thetime of filing of the present application, by revising the initial claim into an“excluding claim.”
Since the patentee, at the time of filing of the application, is not aware of
the existence of the invention claimed in a prior application, the description
or drawings attached to his/her patent application usually do not containany specific statements on such prior invention. The provision of theproviso to Article 134(2) of the Patent Act prior to the revision in 1994 shallalso apply to a correction to be made to correct the matters that are notspecifically stated in the description or drawings. As long as such correction
can be found not to be adding any new technical matters to the technicalmatters disclosed in the statements in the description or drawings, it should
be deemed to be made within the “scope of the matters stated in thedescription or drawings.”
Based on the legal construction mentioned above, the Court found that
the Correction conformed to the Patent Act.
On this issue, the Court also addressed the JPO’s Examination
Guidelines, which provide that a correction revising an initial claim into an“excluding claim” shall be treated “exceptionally” as being made within thescope of the matters stated in the description or drawings. The Court concluded
that this treatment is “inappropriate,” holding as follows.
Even in the case of an amendment in which the matters to be amended arestated with negative expressions, if the matters to be amended are statedin the description or drawings, such amendment can be deemed not to beintroducing any new technical matters as in the case of an amendment inwhich the matters to be amended are stated with positive expressions,
unless there are special circumstances. And an amendment in which thematters to be amended are not stated in the description or drawings should
not always be deemed to be introducing a new technical matter.

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(2) Use of the registered trademark
As a result of the Correction, the registered trademark, “TEPIC,” isadditionally stated in the claims. There is more than one product that can beidentified by means of the trademark “TEPIC.”
On this issue, the Court held as follows: [1] Since the Correction isintended to exclude the relevant part of the invention that is identical to theinvention claimed in the prior application so as to avoid invalidation of thePatent by reason of such identity, the term “TEPIC” mentioned in the Correction
can be regarded as referring to “TEPIC” stated in the description attached to theprior application; [2] The registered trademark “TEPIC” mentioned in theCorrection can be deemed to cover all products that could be identified by theregistered trademark at the time of filing of the prior application, and therefore,
to that extent, the products identified by the registered trademark “TEPIC”
cannot be regarded as being technically unclear.
In relation to this issue, the Court commented on the conventional
practice at the JPO.
In general, the products identified by a registered trademark cannot always
be regarded as being technically clear. We cannot clearly identify which
product, among those generally called “TEPIC,” is designated by the term
“TEPIC” mentioned in the Correction, only by reading the statements in thedescription of the inventions after the Correction. In order to enable thirdparties who have accessed the statements in the corrected description tounderstand the content of the inventions stated in the claims, it is basicallydesirable to clearly indicate in the description that “TEPIC” mentioned in theCorrection refers to “TEPIC” stated in Working Example 2 disclosed in thedescription attached to the prior application. In order to provide such a clearindication, it is necessary to correct the detailed explanation of theinvention included in the description, thereby clearly indicating that thestatements in the claims have been corrected for the purpose of excluding
the invention stated in Working Example 2 disclosed in the description
attached to the prior application. Such correction can be deemed to bemade for the purpose of clarifying an ambiguous statement in the detailed
explanation of the invention upon correcting the statement in the claims. In
light of our holdings shown above, the Correction can be deemed not to be
introducing any new technical matter, nor can it be regarded as

5substantially enlarging or altering the scope of claims. However, due to thefact that the JPO, according to the Examination Guidelines mentioned
above, conventionally treated such correction as not being made “within thescope of the matters stated in the description or drawings,” the defendant
did not choose to request such correction but rather to identify the relevant
part of the invention to be excluded by only using the term “TEPIC” whencorrecting the claims.
The Court also commented on the relationships between the Correction
and the form subject to the Ordinance for Enforcement of the Patent Act.
Article 24 of the Ordinance for Enforcement of the Patent Act prior torevision by Ordinance of the Ministry of International Trade and Industry No.
41 of 1990 provides that “the description to be attached to a patentapplication shall be prepared with Form No. 16.” As for Form No. 16, it isprovided that “a registered trademark may be used only in cases where theproduct in question cannot be indicated or identified without using theregistered trademark; in such cases, it shall be stated in the form that theterm in question is a registered trademark.” Under the trademark
registration system, the correspondence between a registered trademark
and the properties and composition of the product identified by theregistered trademark is not assured, and a registered trademark cannot
always be regarded as being capable of identifying a product definitely orclearly. Therefore, in general, the use of a registered trademark in thestatements in a patent description is considered to be allowable only inextremely exceptional cases. The Correction is intended to exclude therelevant parts of the Initial Inventions that are identical to the Cited
invention, by explaining the contents of the Cited invention which are to beexcluded, or listing the ingredients contained in Initial Inventions 1 and2---Ingredients (A) to (D) and (A) to (E), each of which can be chosen froma variety of substances or products, and identifying the relevant ingredientswith negative expressions (in the form of an “excluding claim”) while citing
the statements on the specific substances or products used in Working
Example 2 disclosed in the description attached to the prior application.
This seems to be the only way to exclude the relevant parts identical to theCited invention without excess or deficiency. Therefore, it cannot be6

deemed to be in violation of Article 24 of said Ordinance, when making theCorrection, to indicate the parts to be excluded by using the registeredtrademark “TEPIC,” the factor by which the Cited invention can beidentified.
2. Inventive step in the Present Inventions
The Court affirmed the JPO decision, rejecting other grounds forcancellation of the JPO Decision alleged by the plaintiff. As for the question ofwhether or not the Present Inventions involve an inventive step compared to theInvention Based on Exhibit Ko No. 3, the Court held as follows:
The Invention Based on Exhibit Ko No. 3 differs from the Present Invention
1 in terms of the purpose of the invention, and what is more, we should
determine that Exhibit Ko No. 3 does not provide any suggestion on thetechnical problem to be solved by the Present Invention 1 and the means
for solving it. As alleged by the plaintiff, “N-glycidyl type epoxy resin”(Invention Based on Exhibit Ko No. 3) and “heterocyclic epoxy resin”(Present Invention 1) are names of ingredients that indicate the samechemical constitution from different viewpoints, and there is a publicly
known compound that corresponds to both ingredients, triglycidyl
isocyanurate. However, this fact cannot be the grounds for concluding thata person skilled in the art who has accessed the statements in Exhibit Ko
No. 3 would have recognized the essence of the technical problem to besolved by the Present Invention 1 and easily inferred, as the means forsolving the technical problem, the composition corresponding to thedifference between the Present Invention 1 and the Invention Based on
Exhibit Ko No.3 (the composition using a compound that is “in fine grains
and hardly soluble in used diluents” as an epoxy compound of Ingredient(D)).

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