7

Study on Patent Claim Interpretation (II)In Japan, the doctrine of equivalents has become established as one of the basic principles for claim
interpretation. On the other hand, functional claims and product-by-process claims are thought to be interpretedby comprehensively considering individual and specific factors based on the principles of general claim
interpretation.
This report analyzes and studies recent court decisions with respect to the interpretation of the doctrine ofequivalents, functional claims and product-by-process claims in Japan, as a sequel to last year’s “Studyt on
Patent Claim Interpretation.” With regard to the doctrine of equivalents in particular, this report collects therelevant lower court decisions after the Supreme Court decision in the Ball Spline case in 1998, and thenanalyzes and groups them according to the status of application of the five requirements for establishment ofequivalence. Furthermore, the report compares these domestic court decisions with the U.S., U.K. and German
court decisions that were analyzed in last year’s report so as to examine their respective interpretations in detail.

Ⅰ Introduction
This report is a sequel to the “Study on Patent
Claim Interpretation” published last year (FY2001).

Ⅱ Domestic Provisions Concerning
Patent Claim Interpretation
This report first addresses Section 70 and
Section 36 of the Patent Law, which are provisions
concerning patent claim interpretation in Japan,
reviews the history of amendments to theseprovisions as well as the legislative objective ofSection 70(1), and then examines the significance of
the “statements of the patent claim(s) [scope ofclaim]” provided in Section 70(1). The reportpresents representative court decisions thatreferred to the aim of Section 70, and in the courseof this, it also presents legal theories concerning
patent claim interpretation that are not expressly
stipulated in the Patent Law, but are acknowledged
for the purpose of interpretation, such as
consideration of the prosecution history (and thefile wrapper estoppel in particular), prior arts,
consideration of the state of the art at the time of
the filing of the application, the doctrine of patent
invalidation/abuse of right, and the doctrine ofequivalents.

Ⅲ Trends in the Lower Court
DecisionsConcerningtheDoctrine of Equivalents after theSupreme Court Decision in theBall Spline Case
This report collects, groups and analyzes court
decisions concerning the doctrine of equivalentsthat were rendered during the period fromIIP Bulletin 2003

February 24, 1998, when the Supreme Court
decision in the Ball Spline case had been rendered,
until May 30, 2002. Viewed by patent rightconcerned, the assertion of equivalence was
accepted only in about 7% of all cases in which
equivalency was considered. The application of thedoctrine of equivalents is likely to be prevented dueto the five requirements in the following order of
frequency: the First Requirement (non-essential
portion); the Fifth Requirement (intentional
exclusion [prosecution history estoppel]); theSecond Requirement (interchangeability); the Third
Requirement (ease of interchange); and the Fourth
Requirement (unavailability as prior art).
In the relevant lower court decisions, thefollowing points are noticeable.
c Courts judged that the First Requirement was
to be satisfied even when the accused productdiffered in the structure from the patented
invention with respect to an essential portion, if thedifference was minor and the accused product andthe patented invention were based on the same
technical idea (Tokyo District Court decision on
March 23, 2000; Osaka District Court decision on
May 23, 2000).
d The court judged the accused product to beequivalent to the patented invention on the groundthat the structure, which had been added to thepatented invention by the amendment made in
response to the examiner’s notification of reason
for refusal, was a conventional means and therefore
was not an essential portion of the patented
invention (Osaka District Court decision on May 27,1999). This decision differs from the CAFC decision(in banc) in the Festo case.
e The Second Requirement was determined in
the same manner as determining interchangeability,
which had conventionally been accepted when
applying the doctrine of equivalents.
f No dispute was brought in these cases withrespect to the Third Requirement under which● 56 ●

equivalence was to be determined based on theease of interchange at the time of manufacturinginstead of at the time of filing.
g With respect to the Third Requirement, thecourt judged that “it had been easy to conceive thestructure of the accused product without carryingout special experiments,” while acknowledging that
there had never existed a product having the samestructure as that of the accused product at the time
when the production of the accused product had
started (Osaka District Court decision on May 23,
2000).
h With respect to the Fourth Requirement, thecourt broadly interpreted the Supreme Court
decision and denied equivalence, holding that, inthe case where the subject product was identical tothe device that was described in the specification or
drawings for the prior application, “an art for which
nobody could have obtained a utility model
registration cannot be deemed to be included in thetechnical scope of the registered utility model,” andjudged such an art to be included in “the prior art at
the time of filing” (Tokyo High Court decision on
November 28, 2001).
i With respect to the Fifth Requirement, there
are cases in which: an amendment was made to
reduce the scope of claim in response to the JPO
examiner’s notification of reason for refusal; astructure that had been included in the scope ofclaim for the original application was intentionally
excluded from the scope of claim for the divisional
application based on the former application; and thecourt rejected an argument opposed to the“explanation to clarify ambiguous statements” that
had previously been accepted.
According to the trend in the lower court
decisions concerning the doctrine of equivalents,
the scope of its application is extremely limited.
However, where it is obviously necessary toreasonably interpret the technical scope from theperspective of equity and fairness, it would rather
be appropriate to rationalize the scope of productsthat are substantially identical to the constituent
features described in the scope of the claim as
literal infringement. In this respect, the Supreme
Court decision (Third Petty Bench) on April 28,
1998 will be a useful example.
The doctrine of equivalents would be ofsignificance if it exists as a fundamental rule formodifying other interpretation criteria for thetechnical scope.

Ⅳ Trend in the Lower Court
DecisionsConcerning
theInterpretationofFunctional
Claims and Product-by-Process
ClaimsThe Japanese Patent Law does not have aprovision that is expected to be applicable for
special interpretation of functional claims andproduct-by-process claims. In Japan, interpretationsof these claims are equal to legal theories, andcourts have defined the technical scope of
inventions while comprehensively examining
various factors within the framework of Section
70(1) and (2) of the Patent Law. Since there is no
special provision under the Patent Law, it isunallowable to apply legal interpretations tofunctional claims and product-by-process claims
alone in a manner that is inconsistent with the caseof ordinary claim interpretation. By analyzing andexamining the characteristics and particularities offunctional claims and product-by-process claims andsufficiently understanding the necessity to describesuch claims, it may not be impossible to securelegal stability and draw a valid conclusion without
modifying or changing the interpretation of Section
70 concerning claim interpretation. Most efforts
required for this purpose involve the finding of facts
concerning the matters to be individually andspecifically considered under Section 70(2) of the
Patent Law as well as the comprehensive
evaluation of the fact finding.
When determining an infringement in litigation,
the following matters should be taken into
consideration with respect to how to interpretfunctional descriptions for the purpose of defining
the technical scope of the patented invention.
c “Functional description” should be interpreted
in a manner that is most consistent with the
purports of Section 36(6)(i) and (ii) of the PatentLaw.
d If a “functional description” is broadlyinterpreted, it is more likely to include the prior art.
In this case, it would be appropriate to narrowly
define the technical scope of the patented invention
by excluding the portion that constitutes the priorart, without questioning the “obviousness” of theground for invalidation.
e The technical scope of a patented invention
may consist of a portion that is essential to thetechnical idea and other non-essential portion.
Where a functional description is used for the
structure that constitutes an essential feature, it isnecessary to interpret the description byconsidering how those skilled in the art would
understand it, through a strict comparison with thecontents of the technical idea that is disclosed andexplained in the description in the specification.
With respect to product-by-process claims, it isnecessary to judge whether the description
concerning the process is (A) a description
intended to specify the product or (B) a description
intended to restrict the scope of claim to products
produced by the process. There would be no
problem where it is obvious or where it is not
obvious but can reasonably be presumed that thedescription concerned is a Type (B) description● 57 ●IIP Bulletin 2003

whereas it is often unclear whether the description
concerned is a Type (A) description. In the latter
case, consideration should be given to the following
points.
c A restrictive interpretation of a description
concerning the process should be denied only
under reasonable circumstances that satisfy thefunctions of the scope of claim and needs for its
legal stability. Case-by-case consideration should be
required in this respect.
d It is not always logical to draw a conclusionthat it is impossible to define an “invention of
product” by the process for producing the product.
e It is inappropriate to consider whether theapplicant intended to “define the product by theprocess,” with disregard to the description in thespecification.
f If the applicant intends to describe the process
in the specification for the purpose of defining the
product, he may take an approach of stating to that
effect in the specification. However, such an
approach has yet to be established in practice.

Ⅴ Comparison with Major Foreign
Countries concerning the Doctrineof Equivalents
1

Japan-U.S. Comparison concerning theDoctrine of Equivalents

The important court decision for the U.S.
interpretation of the doctrine of equivalents is theWarner-Jenkinson Supreme Court decision in 1997.
In this decision, out of concern that the doctrine ofequivalents, when applied, would impair thefunction of claim to make public the scope ofmonopoly for the patented invention, the Supreme
Court applied the doctrine to each feature of a claim
and more firmly applied the prosecution history
estoppel, thereby raising an alert to excessive
application of the doctrine.
This Supreme Court decision left the issues ofwhat types of amendments would be subject to theprosecution history estoppel and whether thedoctrine of equivalents would be excluded
completely or flexibly when the prosecution history
estoppel was to be applied. The Festo casedecisions by the CAFC (in banc) and the Supreme
Court clarified these issues.
The Japanese doctrine of equivalents is similar
to the German doctrine, and it is not easy tocompare it, in an exact and strict sense, with thedoctrine in the United States where the history andlitigation systems differ from those of Japan.
However, the Japanese doctrine and the U.S.
doctrine have recently been becoming closer toeach other, and a bold comparison between the twobrings about the following conclusions.
c There is no difference between Japan and the

IIP Bulletin 2003

United States with respect to the determination ofequivalence for each feature of a claim.
d Among the three elements involved in the
triple identity test, the test of substantially thesame function and the test of substantially the same
result correspond to the Second Requirement in
the Ball Spline decision while the test of
substantially the same way corresponds to the First
Requirement.
e The Warner-Jenkinson decision held that thetime criterion of possible knowledge of thoseskilled in the art with respect to interchangeabilityof elements was at the time of infringement,
meaning that whether those skilled in the art could
have known the possibility to interchange anelement of the patented invention with anequivalent should be determined based on theirknowledge at the time of infringement, which issimilar to the Third Requirement in the Ball Spline
decision.
f The prosecution history estoppel, which wasestablished in the Warner-Jenkinson decision andthe Festo Supreme Court decision, share thepurport with the Fifth Requirement in the Ball
Spline decision. However, due to the fact that theUnited States has the jury system while Japan does
not have one, there is a difference between the two
with respect to the burden of assertion and proof
under the rule of prosecution history estoppel; In
the United States, if the defendant asserts andproves that the applicant has made an amendment,
it shall be presumed that the applicant has
surrendered the equivalent concerned by making
such an amendment whereas the burden of proof
shall remain on the applicant in Japan. However,also in Japan, the defendant shall bear the burden of
proof with respect to the Fifth Requirement toshow that the applicant has intentionally excluded
the subject product from the scope of claim by anamendment.
g The Formstein decision in Germany indicateda concept corresponding to the Fourth Requirementin the Ball Spline decision whereas no such concept
was found in court decisions in the Untied States.
However, in the Wilson sporting goods case, theCAFC suggested a concept (on hypothetical claim)that is close to the Fourth Requirement, andtherefore it is necessary to follow the future trend
in the United States.
2

Japan-Germany Comparison concerning
the Doctrine of Equivalents

German courts that deal with infringement
litigation are subject to the principle of treating apatent as a valid one until a decision to invalidate it
becomes final and conclusive in the patent
invalidation procedure. The effect of a decision to
grant a patent shall only exist in the principal
sentence that acknowledges the patentability based● 58 ●

on claim(s). It is unallowable, either in the case ofidentical infringement or the case of infringement
by equivalents, to look at matters other than thedescriptions in the specification and drawings,
which may be taken into consideration under theGerman Patent Law. Similar to an identical
infringement, an infringement by equivalents is
considered to come about as a natural result fromclaim interpretation and to be included in the basic
scope of protection for a patent right.
The scope of protection for a patented
invention from an identical infringement shall be
the scope defined by the interpretation of patentclaims by those having ordinary skill in the art towhich the invention pertains on the filing datebased on the detailed description of the invention,
the drawings and the prior art that is included in
the detailed description of the invention. Within
this scope, the defendant may not present claim
interpretation based on the prior art that is notincluded in the detailed description of the invention
or assert a defense of free state of art. In this case,in order to avoid an identical infringement, thedefendant should institute an invalidation lawsuit.
In other words, in the case of an identical
infringement in Germany, a patent shall be treatedas a valid one until a decision to partially invalidate
it becomes final and conclusive or unless acorrection is made to add a restriction that has notbeen seen in the specification in the prosecution
history and such correction becomes final andconclusive; thus, claims shall not be interpreted
restrictively but literally.
Where the defendant’s allegedly infringing
embodiment is not included in the scope ofprotection from an identical infringement,
consideration is made to expand the scope ofprotection under the doctrine of equivalents. The
scope of protection from an infringement byequivalents is based on the knowledge of thosehaving skills in the state of the art including theprior art that is not stated in the specification. It isallowed to assert a defense of free state of the art
by drawing a conclusion to deny an infringement on
the ground that the defendant’s allegedly infringing
embodiment is not patentable in light of such stateof the art.
Under the existing German Patent Law, theprosecution history shall in principle be excluded
from consideration unless a disclaimer or
restriction of the scope of protection is stated in thespecification. However, it is not allowed to assert
the scope of protection that is inconsistent with thepatentee’s statement to restrict the scope during
the opposition procedure, against a person who has
been involved in the opposition procedure. On theother hand, it is denied to generally allow anassertion of the file wrapper estoppel against aperson who has not been involved in the preceding
procedure.

Germany differs from Japan in that, under the
existing German law, courts have yet to clearly
indicate the time criterion for the determination ofequivalence and the dominant view supports thetime of filing as such criterion.

Ⅵ Comparison with Major Foreign
Countries
concerning
theInterpretationofFunctional
Claims and Product-by-Process
Claims1

Japan-U.S. Comparison concerning theInterpretation of Functional Claims

In the United States, a special provision
regarding functional claims is stipulated as 35 U.S.C.
Section 112(6). The CAFC decision (in banc) in the
Donaldson case held that Section 112(6) should also
apply in the course of examination procedure in the
United States. On the other hand, there is no suchspecial provision in the Japanese Examination
Guidelines, and where a claim includes descriptions
defining a product by its functions, characteristics,
etc., all products that have such functions andcharacteristics shall in principle be recognized as
being included in the scope of claim.
With respect to literal interpretation of claims,
Section 112(6) of the U.S. Patent Law provides that“such claim shall be construed to cover thecorresponding structure, material, or acts describedin the specification and equivalents thereof.”
Consequently, “structural equivalency” wasrequired in the interpretation of equivalents in mostcourt decisions.
Various opinions have been presented withrespect to the relationship between such structural
equivalency and the determination of equivalence
under the doctrine of equivalents. As shown inrepresentative CAFC decisions in the Chiuminattacase and the Odedicts case, details have yet to beestablished in the theories for interpreting“equivalents” provided in Section 112(6), such aswhether to apply the all element rule or how todecide the ratio of application between the all
element rule and the doctrine of equivalents. In any
case, a functional claim shall not be deemed to beeffective literally and shall only cover the structure,material or acts described in the specification andstructural equivalents thereof.
In Japan, on the other hand, as there is no suchprovision on literal interpretation of claims that isseen in the U.S. Patent Law, whether functional
claims should be specifically interpreted becomes aproblem. The Tokyo High Court decision on
December 20, 1978 held that, in the case where theconstituent features of the invention were
described so functionally and abstractly and theirtechnical meanings were not clearly understood● 59 ●IIP Bulletin 2003

from the description of the specification or technicalcommon knowledge, the scope of right should not
be defined by such features but limited to the scopein which those skilled in the art could have easily
worked the invention based on the description of
the specification. Such restrictive interpretation
was also adopted in the Tokyo District Court
decision on December 22, 1998.
Japanese courts showed the same direction as
U.S. courts in that functional claims should beinterpreted more narrowly than the language of theclaims. However, the court decisions in Japan
mentioned above focused on the issue of whether
those skilled in the art could have worked theinvention based on the description of thespecification, rather than the issue of structural
equivalency, which is to be considered inaccordance with Section 112(6) of the U.S. Patent
Law.
In Japan, the doctrine of equivalents has neverbeen applied to functional claims. Theoretically,
there seems to be no reason to deny application of
the doctrine of equivalents unless the requirements
established in the Ball Spline Supreme Court
decision are satisfied. However, since a problem
would arise in respect of predictability if thedoctrine were applied to functional claims, carefulconsideration should be given to the application of
the doctrine.
In the United States, infringements have been
affirmed by courts according to the doctrine ofequivalents. Under the U.S. Patent Law, thedoctrine of equivalents shall apply in the casewhere (a) the function of an accused product is not
identical to that disclosed in the specification but isregarded as being substantially the same therewith,and (b) interchangeability with technologies
developed after the filing of the patent application isquestioned.
2

Japan-U.S. Comparison on the Interpretationof Product-by-Process Claims

Product-by-process claims are accepted bothin Japan and the United States. However, in bothcountries, there is a difference between claim
interpretation in the establishment of patent rightand claim interpretation in infringement litigation.
In Japan, the theory applied to theinterpretation of product-by-process claims in theestablishment of a patent right is that a productidentical to the patented invention shall be includedin the technical scope of the patented invention
even if it is produced by a different process(“Identical Product Theory”), instead of the theory
that such a product shall not be included in thetechnical scope if it is produced by a different
process (“Process Limitation Theory”). The
Identical Product Theory is also applied in the
United States to claim interpretation in the

IIP Bulletin 2003

establishment of a patent right.
However, in the case of claim interpretation in
infringement litigation, Japanese courts haveapplied either (1) the Identical Product Theory, (2)limitation by process under special circumstances,or (3) the Process Limitation Theory, but havenever affirmed infringement. In the United States,
two collegial bodies of the CAFC have applieddifferent theories, one the Identical Product Theory
and the other the Process Limitation Theory. An
infringement was affirmed under the Identical
Product Theory with respect to the patent for a
product by a genetic recombination technology, but
this case has been appealed and is currently
pending at the CAFC.
In Japan, considering the significance of
accepting product-by-process claims, it may beappropriate in some cases to apply the Identical
Product Theory in interpretation of rights.
c Inventions pertaining to technical fields inwhich it is difficult, based on the state of the art at
the time of the filing, to define a product produced
by a process, according to its nature or structure(e.g. inventions in biotechnology fields)
d Inventions pertaining to technical fields inwhich a product is defined by the assembly methodthat is applied to assemble the product (e.g.
inventions in mechanical fields)
e Inventions pertaining to technical fields inwhich it is difficult to define changes that occur in a
product due to a process, according to its natureand structure (e.g. inventions in chemical fields
such as mixtures, high polymers, metals).
The primary significance of applying the
Identical Product Theory in interpretation of rights
is to secure predictability of claims for a third party.
Therefore, disadvantages due to inadequate
disclosure of the nature or structure of the patented
invention should be born by the patentee, anddeliberate interpretation should be required so thatthe effect of a patent right shall extent to a productproduced by a process other than the disclosed
process only if the nature or structure of thepatented invention is clear to those skilled in theart based on the description of the specification, or
if an accused product is produced after such natureor structure is clarified.

Ⅶ Conclusion: Comparison between
Japan, the U.S. and Europe withrespect
toPatentClaimInterpretation
1

Japan-U.S. comparison(1) Claim interpretation in the U.S. focuses on
embodiments of the invention claimed in thespecification, and the following three steps aretaken for determining an infringement in litigation,● 60 ●

based on such focus.
c Whether an alleged infringement is an
infringement of claim language;d Whether the doctrine of equivalents should
apply (expansion of claim language);e Whether the accused product falls underequivalents provided in Section 112(6) of the U.S.
Patent Law (restriction of claim language)
In the Warner-Jenkinson decision, the Supreme
Court held that equivalency should be determinedthrough element-by-element comparison, but did
not deny all decisions previously rendered by the
CAFC through comparison of the invention as awhole.
(2) Claim interpretation in Japan puts importanceon claims themselves, and many court decisions
have been rendered by the following interpretation
methods.
c Restrictive interpretation in light of the artsthat were publicly known or used before the filing;d Restrictive
interpretation
under
the
prosecution history estoppel;e Restrictive interpretation of the technicalscope in the case where functional or abstract
descriptions are included in claims.
In addition to these methods, the Ball Spline
Supreme Court decision accepted the doctrine ofequivalents, which had been suggested by lower
courts as a method of expanding claim language.
If the Second Requirement and Third
Requirement indicated in the Ball Spline decision
are combined together, a product “that can achieve
the same object and effect as an embodiment of thepatented invention and that could have easily been
conceived of by those skilled in the art based on theembodiment” shall constitute an equivalent to thepatented invention. This definition is substantiallythe same as the ruling in the Warner-Jenkinson
decision in the U.S. that judged an art that thoseskilled in the art would have known should be
deemed to be equivalent to the patented invention.
In Japan, there is no such specific provision
regarding the interpretation of functional claims as
Section 112(6) of the U.S. Patent Law, and theinterpretation is left to the discretion of courts. The
objective of Section 112(6) of the U.S. Patent Law
is not to nullify functional claims whereas there isroom for application of the theory of “obvious
invalidation” in infringement litigation in Japan.
2Comparison between Japan and the U.K.
／Germany in claim interpretation(1) Claim interpretation in Germany clearly
divides infringements into literal infringement ofclaims (identical infringement) and infringement by
the subject product that is equivalent to thepatented invention (infringement by equivalent). In
the case of a dispute over an identical infringement,
if there is highly likely to be a ground forinvalidation of the patent, the legal proceedings
shall be suspended until the patent office renders a
judgment in an invalidation trial. On the other hand,in the case of an infringement by an equivalent,
judicial courts shall determine whether theequivalent is included in the scope of protection forthe patented invention.
In Germany, in order for functional claims tobe accepted, c they should enable those skilled in
the art to work the patented invention over theentire coverage of the functional expressions in theclaims, and d the functional expressions should not
set forth the technical problem itself. The validityof such claims shall be examined by the German
Patent Office or the EPO.
In the case of product-by-process claims, oncea patent is established, products identical to the
product produced by the claimed process shall be
included in the scope of protection for the patented
invention, irrespective of the production process or
use of such products.
In this respect, there is an established rule inGermany that all that matters is the identicalness of
products, irrespective of production process, bothin the examination of product-by-process claims andthe determination on infringement.
Requirements for equivalents in Germany are
indicated in the Formstein decision.
c Whether an accused product solves the sameproblem as that solved by the invention.
d Whether the solution by the accused productrelies upon the same operation/result as that relied
upon by the invention.
e Whether those skilled in the art could
understand, based on the careful consideration on
the claimed invention, that the operation/result
achieved by the accused product is the same as thatof the invention.
When comparing them with Japaneserequirements for equivalents in the Ball Spline
decision, the Second Requirement corresponds to
d and the Third Requirement corresponds to e.
The First Requirement, “non-essential portion,” isdeemed to be included in d and e.
In German requirements, the condition of“based on the careful consideration” in e raises a
problem. According to the Formstein decision, such
understanding based on the “careful consideration”
is deemed to be a thought that can be reachedwithout making inventive efforts.
(2) Claim interpretation in the U.K. is based on
the “purposive construction theory” consisting of
the following three steps, which was suggested in
the Catnic-Improver case.
c First step
Does the variant have a material effect upon
the way the invention works? If yes, there is noclaim infringement.
d Second step
Would this fact (i.e. the fact that the variant● 61 ●IIP Bulletin 2003

has no material effect) have been obvious at thedate of publication of the patent to a reader skilledin the art? If yes, there is no infringement.
e Third step
Would those skilled in the art neverthelesshave understood, from the language of the claim,that the patentee intended that strict compliancewith the primary meaning was an essential
requirement of the invention? If yes, there is no
infringement.
When comparing them with Japaneserequirements in the Ball Spline decision, the firststep corresponds to the Second Requirement andthe second step to the Third Requirement, though
the U.K. second step differs from the corresponding
Japanese requirement in that it recites the date of
publication of the patent as the critical date.
In Japan, it is assumed that all conditions
described in the claim are in principle necessary or
essential to define the claimed invention; therefore,
the U.K. third step shall never be examined. Thus,
the purposive construction in the U.K. is narrower
than claim interpretation under the Japaneserequirements in the Ball Spline decision.
There is a difference between the U.K. andJapan in that an expert witness is appointed in the
U.K. but not in Japan, and that the file wrapper
estoppel is not applied in the U.K.
(3) Conclusion
Though legal systems differ among Japan, theUnited States and European countries, there is acommon theory that, in claim interpretation, courts
and patent offices reexamine the scope ofprotection for the substantial value of a patented
invention to determine the existence of an
infringement by an accused product. The Ball
Spline decision in Japan is deemed to have adopted
the U.S. and German concepts on equivalents andsuggested a common judicial theory, though indifferent expressions.
Also with respect to interpretation offunctional claims and product-by-process claims,
the United States and Germany stand on the samefooting in that the scope of protection for a patented
invention is limited to embodiments that could have
easily been conceived by those skilled in the art
based on the description in the specification, andthe working examples in particular, and this theory
has also been seen in some court decisions inJapan.
(Senior Researcher: Saburo Moriwaki)

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● 62 ●

● 63 ●IIP Bulletin 2003