Center for Advanced Study & Research on Intellectual Property

 

CASRIP Newsletter - Fall/Winter 2009, Volume 16, Issue 1

Correction (Amendment) Practices on Japan Patent Law must be changed in accordance with three decisions by the Supreme Court of Japan and the Grand Panel of the Japanese IP High Court in 2008

Tatsuo Takeshige1

I. Introduction

In 2008, the Supreme Court of Japan issued two decisions, Philips Lumileds Lighting2 and Laserck Corp.,3 and the Grand Panel of the Japanese Intellectual Property High Court (“IP High Court”) also issued one decision, Tamura Kaken,4 regarding the correction5 system in Japanese Patent Law. In general, the Supreme Court has dismissed final appeals without issuing any opinions, because Japanese laws, like the civil procedure code, limit the scope of cases that can be appealed with the aim of easing the burden on the Supreme Court. Under this legal system, the number of decisions by the Supreme Court related to correction is extraordinarily low. In addition, the Tamura Kaken decision is only the fifth decision issued by the Grand Panel of the IP High Court after its establishment on April 1, 2004.6 The Grand Panel is a board of five judges including all chief judges of all divisions in the IP High Court. The two decisions of the Supreme Court, which dealt with some procedural matters of the correction system in Japanese Patent Law, caused the Japan Patent Office (“JPO”) and patentees to change their practices. The Grand Panel in Tamura Kaken, meanwhile, addressed substantial questions about the acceptable scope of corrections or amendments, and provided a new test to examine whether corrections or amendments related to the so-called “excluding claim” met the conditions required by the Japanese Patent Law, e.g. that the correction or amendment must be within the scope of the matters described in the specification, claims or drawings originally attached to the application. The new test, which may change the principle of Japanese Patent Examination Guidelines regarding excluding claims, has raised strong debate among patent examiners and patent applicants. In this article, the current Japanese correction systems will be discussed through an analysis of those decisions.

II. Outline of the Japanese Appeal System

Three major components of the appeal system in Japan with respect to patent are the appeal/trial against the examiner’s decision of rejection, the trial for correction, and the appeal/trial for invalidation of a patent that has already issued. The applicant is allowed to file an appeal against the decision of rejection within 30 days from the date when the decision was received.7 Any person who finds a defect in the content of a patent, on the other hand, can demand a trial for invalidation of the patent. In addition, the system of trial for correction has been established for the purpose of giving the applicant an opportunity to correct a deficiency in the patent. A trial/appeal collegial body, which includes three or five appeal examiners (usually three), examines the appeal, and then issues its decision based on the majority rule. The party can file an appeal against the decision with the IP High Court and then further appeal to the Supreme Court. 

III. Procedural Aspects on Correction of patent claims or specifications

  • Correction in Trial for invalidation of patent
  • Under Japanese Patent Law, no invalidation decision has been allowed in infringement court proceedings and no lawsuit has been accepted for the purpose of confirming a patent invalidation for a long time. Article 178 of the Patent Law states that “an action with regard to a matter for which a request for a trial may be instituted only against a trial decision.”8 This clause means implicitly that only Appeals Examiners of the Patent Office, who have professional knowledge and experience in the field, shall be responsible for rendering a decision to invalidate a patent.9 Therefore, the infringement court (the court considering the claim of patent infringement) often must adjourn the proceeding until the trial/appeal collegial body in the JPO decides whether or not the patent in question is valid.10 On April 11, 2000, however, the Supreme Court of Japan in Kilby11 dramatically changed this situation through its statements as follows:

    (1) Substantively, to accept a claim for injunction, damages, or other claims based on a patent of dubious validity would grant such patent owner unfair profit and unfairly disadvantage others working on the invention. Such result violates the principle of equity;
    (2) When possible, it is best to settle a dispute simply and quickly in a single proceeding. If the defendant is not allowed to assert reasons for invalidating the patent as a defense against the exercise of patent right in a patent infringement proceeding such as the one
    before this Court, the defendant will then be forced to initiate invalidation proceedings in the Patent Office to obtain a conclusive decision of invalidation even if the defendant had not intended to pursue such avenues to render the patent publicly invalid. Such an outcome would conflict with the principle of judicial economy; and
    (3) Article 168, paragraph 2 of the Patent Law cannot be interpreted as requiring the cessation of proceedings even in a case where evidence for invalidating the patent is apparent and invalidation of the patent concerned is a certain and foreseeable likelihood.

    As a result of the decision of the Supreme Court in Kilby, the infringement court should be capable of judging whether there is any “clear” reason to invalidate the patent, even prior to the issuance of a final decision invalidating the patent. This decision raised a new question as to what reason for invalidation is “clear”. Later, the current Japanese invalidation system came into operation on January 1, 2004, and it explicitly allowed the infringement court judges to decide whether the patent in question is valid.12 After introduction of this law, the court can deny the patent infringement and dismiss the injunction based on the patent, as long as it recognizes that the patent is invalid not only based on a “clear” reason but also using the common standard of patent validity. However, even if the court decides that the patent is invalid, the patent is invalid for only the other party against the patent holder in the particular case, i.e. the defendant in the patent infringement lawsuit or the plaintiff in the confirmation lawsuit for a patent invalidation. That is to say, a patent retains its validity and enforceability against everyone else until the trial/appeal collegial body reaches the final and conclusive decision of invalidation.

    A patentee, in general, contacts and negotiates with the alleged patent infringer to enter into a license to obtain royalties or to stop them from using the patent. Therefore, a typical infringement dispute in court is the last resort for the patentee. However, the infringement court requires the patent holder to deal with a more difficult situation regarding invalidation than the trial of invalidation in the JPO, because the patent holder is not given any chance to correct any part of the claims or specification in the court proceedings. Only through examination by the trial/appeal collegial body in the JPO, can the patentee correct a flaw in the patent.

  • Two recent decisions of the Supreme Court
  • Can part of a demand for correction become final and conclusive?
  • The patentee, who is the defendant in a trial/appeal for invalidation of a patent, has the legal right to demand correction of the claims, specification or drawings, while the appeal/trial is pending in the JPO. Such demand for correction is accepted without judgment on whether the invention constituted by the corrected claim is one that could have been patented at the time of the patent application filing, and such judgment is made only in the examination of the ground for revocation later conducted. Under this correction system, a JPO trial/appeal collegial body has decided to dismiss the entire demand for corrections even when only one corrected claim fails to meet the requirement for patentability, regardless of whether other corrected claimed inventions satisfy patentability. The dismissal of the demand for corrections eventually renders the patent null, for the demand is generally requested to fix the invalidity of claims. Therefore, the patentee hopes that the JPO accepts the correction of even only one claim out of the entire demand for corrections, because the acceptance renders the corrected claim valid.

    There are some academic theories with respect to this issue in Japan. According to the “theory of each claim basis,” which was adopted by the IP High Court in Advanced Micro Devices,13 the correction based on each claim must be judged and accepted (or dismissed). Another theory, the “indivisibility theory,” asserts that the appeal/trial collegial body has to accept or dismiss indivisibly the entire demand for multiple corrections. The latter was adopted by the IP High Court in Philips Lumileds Lighting.14

  • The decision of Supreme Court in Philips Lumileds Lighting
  • In 2008, the Supreme Court in Philips Lumileds Lighting stated that “in the case that the patentee demand for correction related to two or more claims during pendency of patent opposition proceedings at the JPO, …, it is necessary to judge their acceptability individually in each claim.”15 That is to say, it should not be permitted to assume that any JPO appeal/trial collegial body may dismiss the entire demand for corrections including legally proper correction based on the fact that one of the claimed inventions fails to meet the requirement of patentability. According to this holding, it can be seen that the Supreme Court adopted the so-called “theory of each claim basis.” Although the Supreme Court in this case referred to only the case of demand for correction during the pendency of patent opposition proceedings, it can be implied that the same approach would apply during pendency of the current invalidation proceedings because the opposition system was merged with the previous invalidation system in 2004. Furthermore, the legal aims of both systems of correction in opposition and invalidation proceedings are the same.16

    The Supreme Court decision had a great impact on the JPO trial/appeal department. It has to consider many legal matters from the holding, and must revise its practice guidelines. One of the most difficult matters is a case where one part of the corrections in the specification is related to two or more claimed inventions. To judge whether the correction can be accepted based on thought of each claim respectively is complicated because the patent law must not have supposed that there are the same number of theoretical specifications as those of the claims. For example, suppose one correction for one working example is related to two or more claimed inventions. When the correction connected to one claim legally meets the requirement for adequate correction, but the correction connected to another claim cannot satisfy the requirement, the judge with respect to the correction of specification cannot reach one conclusion. In such a case, regardless of the Supreme Court decision, the appeal/trial collegial body will accept or dismiss indivisibly the entire demand for two or more correction despite the teachings in this case.

  • Retrial reason when correction decision becomes final and conclusive after infringement claim was dismissed due to patent invalidation
  • Due to the Supreme Court decision in Kilby in 2000, many patents were considered to be invalid in infringement cases when the court decided whether the patent had been infringed. On the other hand, there is no official opinion about whether or not the patentee can bring an independent lawsuit against the same accused products or use based on the infringement for the same patent after the patent’s claims or specification, which may render the patent invalid, are legally corrected through the appeal body’s examination. In addition, it is unclear whether those corrections after the decision would correspond to the retrial reason as defined in the Code of Civil Procedure. In this situation, the Supreme Court in Laserck provided some suggestions about the retrial reason after correction of the patent claims or specification.

  • The Supreme Court in Laserck affirmed the possibility of retrial reason
  • The patent in question, Japan Patent No.2139927, is related to equipment for bending a knife. The applicant X, who later became the plaintiff of the infringement case, applied for the invention to the Japan Patent Office on April 21, 1993, the patent was registered on January 1, 1999. The defendant Y1 of the infringement case manufactured a machine for automatically bending a knife, and then sold it to Y2. X brought a lawsuit against Y1 and Y2 to seek an injunction against the manufacture and sale of the machine and sought damages for infringing the patent.

    The district court in Laserck17 found that claims 1 and 5 in question were clearly invalid on the basis of the Japanese Patent Law Article 123 Paragraph 1 Sub-Paragraph 118 because the claimed inventions had been granted in violation of the inventive step requirement. Therefore, the district court concluded that X could not enforce claims 1 and 5 of the patent on Y1 and Y2.

    X then appealed to the Osaka High Court. While the case was pending in the High Court, X requested correction for restriction of the scope of claims to the JPO several times to avoid the invalidation of claim 5. However, the High Court in Laserck19 dismissed all of X’s claims stating that the patent was invalid and thus there was no need to judge whether the conduct of Y1 or Y2 were within the scope of the patented invention. Therefore, X appealed again to the Supreme Court to remand the case to the previous High Court. X also requested the correction for restriction of the scope of claims twice, and then, at last, the JPO trial/appeal collegial body accepted the fifth correction of claim 5. Therefore, at that time, the validity of claim 5 was assured by the JPO.

    The Supreme Court in Laserck concluded that the trial courts20 may deal with the retrial when the claim was corrected after the infringement claim had been dismissed due to patent invalidation,21 although the expression of the Supreme Court decision was a suggestion at the most. Concretely, the Supreme Court stated that

    where corrected claims deemed to be patented from the time of the first patent issue (Japan Patent Law article 128), in this case that the correction met restriction of the scope of claims, since the courts cannot completely deny possibilities that the above invalidation was removed due to the correction, … there is room for a retrial reason prescribed by the Code of Civil Procedure Article 338 Paragraph 1 Sub-Paragraph 8 in this case.22

    However, the Supreme Court held that the retrial claim could not be accepted since X’s allegation about the correction of the patent was deemed to be for the purpose of unreasonably delaying the proceedings to resolve the disputes between the plaintiff and the defendants. The Supreme Court indicated that one of the crucial factors in the above decision was the fact that the patentee requested and withdrew the correction of the claim twice during the lower court proceedings.23

IV. Substantial Aspects on Correction (Amendment) of patent claims or specification

  • Correction during appeal and Amendment during examination
    • Basic Principle
    • Under the Japanese Patent Law, corrections of the claims, the specification or the drawings, to be filed by a patentee after that patent has been granted must meet several conditions to be accepted. The most important condition, the so-called “prohibition of addition of new matter,” is that the correction must be within the claims, the specification and the drawings filed at the time of the application for the patent. This condition, which is defined by law article 126 paragraph 3, is a lynchpin of the “first to file system,” therefore the JPO has strictly interpreted the condition.24 In addition, the condition is required for amendment during the pendency of a patent application before it has been granted or reaches its final rejection,25 and for demands for correction during the pendency of the patent invalidation trial.26 The Japanese Patent Examination Guidelines which are used by patent examiners in the JPO provides common ideas toward the condition for examiners and trial/appeal examiners. The JPO’s thoughts toward the condition is evident in its interpretation of the amendment provision defined in Japanese Patent Law Article 17 bis paragraph 3, which states that the amendment “shall be made within the scope of the matters described in the specification, claims or drawings originally attached to the application.” According to the Guidelines, matters “within the scope of the matters described in the specification, claims or drawings originally attached to the application” includes not only “matters explicitly described in the specification, claims or drawings originally attached to the application” but also “obvious matter from the specification, claims or drawings originally attached to the application.”27 From the practical point of view of examination, the above “matters explicitly described” supposes the same word or expression, and the above “obvious matters” has the same meaning. The Guidelines state that the definition of “obviousness” used in the Guidelines is the same as “jimei,” the general Japanese word used in court decisions; that is to say, it is “to clarify a thing in itself without any external evidence.”28 Therefore, the obvious matters in this discussion are completely different from the notion of obviousness defined under U.S. Patent law.

    • Excluding Claim
    • Before the current interpretation, i.e. before 2003, under the previous Guidelines, only “matters which are directly and unambiguously derivable by a person with ordinary skill in the art from the matters described in the specification or drawings originally attached to the application” were deemed as “matters described in the specification or drawings originally attached to the application.” Therefore, the current interpretation is comparatively loose as a condition toward amendment or correction. However, even with such loose interpretation, it is still sometimes too strict in allowing an amendment or correction.

      For example, in a case where the amendment or correction is filed in order to avoid accidental conflict with prior art which is not directly related to the applicant’s invention. Therefore, the exceptional concept of “excluding claim” that was introduced into the old Examination Guidelines, it still remains in the current Guidelines. According to the Guidelines, “excluding claim” is the amendment or correction of a claim, expressly stating the exclusion of solely the matters described in the distributed publication or in the specification or drawings in the application filed earlier as a prior art with respect to the provisions of Article 29 Paragraph (1)(iii)29 , Article 29 Paragraph (2)30 or Article 3931 from the scope of the claim concerned, but at the same time maintaining the expressions of the matters described in the claim prior to the amendment.32 Even if the description regarding the exclusion of prior art in “excluding claim” is neither “matters explicitly described in the specification, claims or drawings originally attached to the application” nor “obvious matters from the specification, claims or drawings originally attached to the application,” the amendment or correction shall not be deemed as introducing so-called new matter.33

      As an example of “excluding claim” in order to understand the concept, suppose that the original claim before the amendment is “a cleaning compound which is a salt comprising Na+ ion as cation thereof,” and then the prior art describes “a cleaning compound which is a salt comprising CO32- ion as anion thereof.” In this case, “a cleaning compound which is a salt comprising Na+ ion as cation thereof (excluding a salt comprising CO32- ion as anion thereof)” is acceptable claim to meet the condition of amendment as so-called “excluding claim,” as long as the purpose of the amendment is to exclude the invention described in the prior art from the original claim.34 This exceptional concept was built from a long history of patent examination practices. Subsequently it is still now supported by the JPO practices, although there was neither any relevant provision in the Patent Law nor any explicit decision by the courts.

    • The decision of the Grand Panel in Tamura Kaken on May 30, 2008
  • The court denied the exceptional concept
  • The Grand Panel, which is the board of five judges including all chief judges of all divisions in the IP High Court in Tamura Kaken stated that the test for the condition for so-called new matter should be the same for every case where the patentee wants to make an amendment or correction to the application or patent.35 Thus, the court held that such an exceptional concept shall not be accepted in the provision about amendments or corrections. However, the court accepted such an amendment or correction like an “excluding claim” in the particular case, when it provided a new test which allowed any amendment or correction so long as it did not introduce any new technical matter.36

  • What is the main point of the new test?
  • According to the decision of the Grand Panel in Tamura Kaken, when the court examines whether the amendment shall be deemed within the claims, the specification and the drawings filed at the time of the application for the patent, the result must be rendered on the basis of whether or not the amendment introduces any new technical matter in connection with technical matters described in the claims, the specification and the drawings filed at the time of the application for the patent while considering the amendment provision’s history, its aim and its interpretation.37 Although the parts titled “the amendment provision’s history, its aim and its interpretation” are quite long,38 we cannot find any clear definition for “new technical matter.” Therefore, when we focus only on the word “new technical matter”, the main point of the new test of “excluding claim” cannot be clearly realized. So-called “new matter” has been used in the examination practice for a long time, and thus “new technical matter” may not be so different from so-called “new matter.”

    However, the court stated in adopting the new test into the case that “since the corrections did not change any technical matters with respect to each invention described in the specification before the correction, it was clear that each correction did not introduce any new technical matter into the technical matters described in the specification, and then the person having ordinary skilled in the art can recognize clearly that the corrections did not introduce any new technical matter in connection with technical matters derived by synthesizing all descriptions in the specification and drawings.”39

    According to this expression “the corrections did not introduce any new technical matter in connection with technical matters derived by synthesizing all descriptions in the specification and drawings,” the Grand Panel seemed to emphasize only technical aspects within a described invention. That is to say, the Grand Panel recognized that, where an invention under Japanese Patent Law means “the highly advanced creation of technical ideas utilizing the laws of nature,”40 “the matters described in the specification, claims or drawings originally attached to the application” was only technical matters.41 Therefore, the Grand Panel daringly denied the exceptional concept having a long history in the Examination Guidelines, which has recognized that the so-called “excluding claim” shall not meet the new-matter condition from the basic principle. However, interpreting the definition of invention, which is set in Article 2 Paragraph 1 in the Japanese Patent Law, has been thought of as one of the most difficult issues in Japanese Patent Law. The court might ignite the controversy through the “excluding claim” in safety. On the other hand, where the Grand Panel pointed out “matters derived by synthesizing all descriptions in the specification and drawings” in order to examine amendment and correction, that kind of consideration was necessary regardless of the decision of the Grand Panel and will continue, but the decision might also emphasize this point.

    Furthermore, in adopting the new test into the case, the Grand Panel also referred to whether the effect of invention was changed by the correction.42 From that point of view, the above example as the excluding claim, “a cleaning compound which is a salt comprising Na+ ion as cation thereof,” cannot be judged under the limited information provided.

    As a result, the new test does not provide such clear standards for judging amendable or correctable scope as the “exceptional concept” used by the JPO.

  • Examinations after the decision
  • In order to understand the new test precisely, we have to wait for many decisions to follow, because “technical matters derived by synthesizing all descriptions” depends on a case by case analysis. However, the JPO has to re-consider how to examine amendments and corrections, for a JPO examiner (or an appeal examiner) is often faced with an application including such an amendment or correction. Furthermore, unfortunately, the new test provided by the court may affect not only “excluding claim,” but also general amendment and correction. Now, JPO examiners and appeal examiners seem to continue to follow the current Examination Guidelines, because the JPO did not provide any official opinion toward the decision in Tamura Kaken, which is pending in the Supreme Court. In addition, since the decision by the Grand Panel in the IP High Court does not create any binding rule on JPO examination or JPO appeal examination, unlike the en banc opinions of the Federal Circuit in the United States, even though the Grand Panel was established by following the idea of en banc of the CAFC, the JPO may continue to ignore the new test provided by the decision. However, since the IP High Court has already issued decisions following the test,43 the ignorance by the JPO may raise additional disputes about patentability.

V. Conclusion

The two decisions by the Supreme Court and the decision by the Grand Panel may provide more favorable circumstances to a patent applicant and patentee for using correction systems. On the other hand, it is not clear how the JPO could change the examination’s or the appeal examination’s practice, for those decisions might cause some actual difficulties to the JPO. Patent specialists should continue to watch for cases on amendment/correction, and the JPO’s future practices.

End Notes

  1. Tatsuo Takeshige is a graduate of the IP LL.M. Program at the University of Washington School of Law, 2008; Visiting Scholar, University of Washington School of Law; Japanese Patent Examiner. This article is based on the author's personal opinion, and is not in any way connected to the JPO.
  2. In Re Philips Lumileds Lighting Co., Heisei 19 (Gyo Hi) 318, the Supreme Court of Japan (Issued on July 10, 2008).
  3. Laserck Corp. v. Ideon LLC, Heisei 18 (Ju) 1772, the Supreme Court of Japan (Issued on April 24, 2008).
  4. Tamura Kaken Corp. v. Taiyo Ink Co. LTD., Heisei 18 (Gyo Ke) 10563, the Grand Panel of the Japanese IP High Court, (Issued on May 30, 2008).
  5. “Correction” is like an “amendment” requested by the patentee after a patent is granted.
  6. See http://www.ip.courts.go.jp/documents/g_panel.html and http://www.ip.courts.go.jp/aboutus/history.html.
  7. Japan Patent Law, Act No. 121 of 1959, Article 121, Paragraph 1.
  8. Id., Article 178, Paragraph 6.
  9. The Supreme Court of Japan in Kilby also stated the same as this common opinion.
  10. Japan Patent Law, Act No. 121 of 1959, Article 168, Paragraph 2 (In relation to litigation). “Where an action is instituted or a motion for order of provisional seizure or order of provisional disposition is filed, the court may, if it considers it necessary, suspend the court proceedings until the trial decision becomes final and binding.”
  11. Texas Instruments Inc. v. Fujitsu, Heisei 10 (O) 394, The Supreme Court, 3rd Petty Bench, (issued on April 11, 2000). So called Kilby case in Japan.
  12. Japan Patent Law, Act No. 121 of 1959, Article 104, Sub-Article 3, Paragraph 1 (Restriction on exercise of rights of patentee, etc.). “Where, in litigation concerning the infringement of a patent right or an exclusive license, the said patent is recognized as one that should be invalidated by a trial for patent invalidation, the rights of the patentee or exclusive licensee may not be exercised against the adverse party.”
  13. In re Advanced Micro Devices, Inc., Heisei 18 (Gyo Ke) 10455, IP High Court (Issued on February 12, 2008).
  14. In re Philips Lumileds Lighting Co., Heisei 18 (Gyo Ke) 10314, IP High Court (Issued on June 29, 2007).
  15. The Supreme Court decision in Philips Lumileds Lighting, at 6.
  16. The guideline for practicing the reformed invalidation trial system (in Japanese), Japan Patent Office, 2003, Chapter 2, pg. 6.
  17. Laserck Corp. v. Ideon LLC, Oosaka District Court, Heisei 13 (Wa) 9403, (Issued on October 21, 2004).
  18. Japan Patent Law, Act No. 121 of 1959, Article 123, Paragraph 1, Sub-Paragraph 1 (this provision, which the courts in this case referred to, was in the previous patent law before it was reformed in 1993, then it was put into operation in 1994) stated that “(1) Where a patent falls under any of the following, a request for a trial for patent invalidation may be filed. In the event of two or more claims, a request for a trial for patent invalidation may be filed for each claim. (i) where the patent has been granted in violation of Articles 25, 29, 29-2, 32, 38 or 39(1) to 39(4);…”
  19. Laserck Corp. v. Ideon LLC, Osaka High Court, Heisei 16 (Ne) 3586, (Issued on May 31, 2006).
  20. In Japan, only the district court and the high court can conduct fact-finding proceedings. That is, the Supreme Court does not find facts.
  21. The decision of the Supreme Court, Heisei 18 (Ju) 1772, (Issued on April 24, 2008).
  22. Id., at 5.
  23. Id.
  24. Examination Standard Office (in Japan Patent Office), Examination Guidelines for Patent and Utility Model in Japan (Oct, 2003), [hereinafter the Examination Guidelines].
  25. Japan Patent Law, Act No. 121 of 1959, Article 17 bis. This article is that “ Paragraph 1: An applicant for a patent may amend the specification, claims, or drawings attached to the application, before the service of the certified copy of the examiner's decision notifying that a patent is to be granted; provided, however, that following the receipt of a notice provided under Article 50, an amendment may only be made in the following cases: (i) where the applicant has received the first notice (hereinafter referred to in this Article as the "notice of reasons for refusal")under Article 50(including the cases where it is applied mutatis mutandis pursuant to Article 159(2) (including the cases where it is applied mutatis mutandis pursuant to Article 174(1)) and Article 163(2), hereinafter the same shall apply in this paragraph) and the said amendment is made within the designated time limit under Article 50;] (ii) where, following the receipt of the notice of reasons for refusal, the applicant has received a notice under Article 48-7 and the said amendment is made within the designated time limit under the said Article; (iii) where, following the receipt of the notice of reasons for refusal, the applicant has received a further notice of reasons for refusal and the said amendment is made within the designated time limit under Article 50 with regard to the final notice of reasons for refusal; and (iv) where the applicant files a request for a trial against an examiner's decision of refusal and the said amendment is made within 30 days from the said request for the said trial. Paragraph 2: Where an applicant of a foreign language written application as provided in Article 36-2(2) amends the specification, claims or drawings under the preceding paragraph for the purpose of correcting an incorrect translation, the applicant shall submit the statement of correction of the incorrect translation, stating the grounds thereof. Paragraph 3: Except in the case where the said amendment is made through the submission of a statement of correction of an incorrect translation, any amendment of the specification, claims or drawings under paragraph (1) shall be made within the scope of the matters described in the specification, claims or drawings originally attached to the application(in the case of a foreign language written application under Article 36-2(2), the translation of the foreign language documents as provided in Article 36-2(2) that is deemed to be the specification, claims and drawings under Article 36-2(4) (in the case where the amendment to the specification, scope of claims or drawings has been made through the submission of the statement of correction of an incorrect translation, the said translation or the amended specification, claims or drawings)) Paragraph 4: In addition to the case provided in the preceding paragraph, where any amendment of the scope of claims is made in the cases listed in the items of paragraph (1), the invention for which determination on its patentability is stated in the notice of reasons for refusal received prior to making the amendment and the invention constituted by the matters described in the amended scope of claims shall be of a group of inventions recognized as fulfilling the requirements of unity of invention set forth in Article 37. Paragraph 5: In addition to the requirements provided in the preceding two paragraphs, in the cases of items (i), (iii) and (iv) of paragraph (1) (in the case of item (i) of the said paragraph, limited to the case where the applicant has received a notice under Article 50 bis along with the notice of reasons for refusal), the amendment of the scope of claims shall be limited to those for the following purposes: (i) the deletion of a claim or claims as provided in Article 36(5); (ii) restriction of the scope of claims (limited to the cases where the restriction is to restrict matters required to identify the invention stated in a claim or claims under Article 36(5), and the industrial applicability and the problem to be solved of the invention stated in the said claim or claims prior to the amendment are identical with those after the amendment.); (iii) the correction of errors; and (iv) the clarification of an ambiguous statement (limited to the matters stated in the reasons for refusal in the notice of reasons for refusal). Paragraph 6: Article 126(5) shall apply mutatis mutandis to cases under item(ii) of the preceding paragraph.
  26. Japan Patent Law, Act No. 121 of 1959, Article 134 bis, Paragraph 5. This paragraph spells out that “Articles 126 paragraph 3 to 6, article 127, article 128, article 131 paragraph 1 and 3, article 131-2 paragraph 1 and article 132 paragraph 3 and 4 shall apply mutatis mutandis to the case of paragraph 1….”
  27. The Examination Guidelines, Part III, Chapter I, Section 3.
  28. Id.
  29. Japan Patent Law, Act No. 121 of 1959, Article 29 Paragraph 1; “ An inventor of an invention that is industrially applicable may be entitled to obtain a patent for the said invention, except for the following: (i) inventions that were publicly known in Japan or a foreign country, prior to the filing of the patent application; (ii) inventions that were publicly worked in Japan or a foreign country, prior to the filing of the patent application; or (iii) inventions that were described in a distributed publication, or inventions that were made publicly available through an electric telecommunication line in Japan or a foreign country, prior to the filing of the patent application.”
  30. Japan Patent Law, Act No. 121 of 1959, Article 29, Paragraph 2; “Where, prior to the filing of the patent application, a person ordinarily skilled in the art of the invention would have been able to easily make the invention based on an invention prescribed in any of the items of the preceding paragraph, a patent shall not be granted for such an invention notwithstanding the preceding paragraph.”
  31. Japan Patent Law, Act No. 121 of 1959, Article 39, Paragraph 1; “Where two or more patent applications claiming identical inventions have been filed on different dates, only the applicant who filed the patent application on the earliest date shall be entitled to obtain a patent for the invention claimed.
  32. The Examination Guidelines, Part III, Chapter I, Section 4.2.
  33. Id.
  34. Id.
  35. Tamura Kaken, the decision of the Grand Panel of the IP High Court, at 52.
  36. Id., at 48.
  37. Id., at 52.
  38. Id., from 39 to 42.
  39. Id., at 48.
  40. Japan Patent Law, Act No. 121 of 1959, Article 2, Paragraph 1.
  41. Tamura Kaken, at 41.
  42. Id., at 48.
  43. Decisions of IP High Court, Heisei 19 (Gyo-ke) 10409 (Issued on June 23, 2008), Heisei 19 (Gyo-ke) 10431 (Issued on July 30, 2008), Heisei 19 (Gyo-ke) 10432 (Issued on July 17, 2008), Heisei 20 (Gyo-ke) 10053 (Issued on June 12, 2008). Cases including typical amendment/correction issues rather than “excluding claim.”

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Last updated 4/27/2012