Japanese Practice on Amendment – Patent – – JPO accepts broader scope of amendment than other countries!? –

1. Introduction

Japanese Patent Act Article 17-2(3) stipulates that an amendment of the description, claims or drawings (hereinafter referred to as the Pending Documents), must be made within the scope of the matters indicated in the description, claims or drawings originally attached to the application (hereinafter referred to as the Originally Attached Documents) (Prohibition of Addition of New Matter).

Such amendment within the scope of the matters indicated in the Originally Attached Documents are specified as follows in the Examination Guidelines for Patent and Utility Model:

(a) amendment made based on matters explicitly stated in the Originally Attached Documents;

(b) amendment made based on matters obvious from the statement in the Originally Attached Documents; and

(c) amendment that does not introduce any new technical matter in connection with the matters stated in the Originally Attached Documents.

The case we introduce in this article provides a good case study to understand more about the scope of amendment accepted in Japan. This case was once determined by the JPO that its amendment was an addition of new matter, but later determined otherwise in the Intellectual Property High Courts (IP High Court).

2. Outline of the Case

<Case Number>
Decision of IP High Court 2019 (Gyo-Ke) No. 10165 Case of an Appeal against a trial decision made by the JPO (ruling made on November 5, 2020).

<History of the Case>
This case is an appeal against a trial decision of rejection (hereinafter referred to as the Decision) made to a patent application of a plaintiff (Title of the Invention: HEAT-RETAINING SHEET; hereinafter this patent application is referred to as the Present Application).

The invention of the Present Application relates to a heat-retaining sheet that retains the surface temperature of a living body such as a human being or an animal other than human beings. The invention of the Present Application recited in its claim 1 is as below:

1. A heat-retaining sheet configured to retain a surface temperature of a living body such as a human being or an animal other than human beings, the heat-retaining sheet comprising:

a flexibly modifiable base material in a form of a sheet; and

a cover body including a non-woven fabric or a woven fabric which ensures air permeability,

wherein an insulation surface is formed on a surface of the base material facing the living body by impregnating the surface of the base material with an insulating material or by applying the insulating material on the surface of the base material, and

wherein the insulation surface of the base material is covered by the cover body.

Representing Drawing (FIG. 5)

This application was examined by the JPO and received a Notice of Reasons for Rejection; and the following amendments were made in response to the Notice. Please pay attention to the recitation of “has translucency”.

1. A heat-retaining sheet configured to retain a surface temperature of a living body such as a human being or an animal other than human beings, the heat-retaining sheet comprising:

a flexibly modifiable base material in a form of a sheet; and

a cover body including a non-woven fabric or a woven fabric which ensures air permeability and water permeability, and has translucency,

wherein the insulation surface of the base material is covered by the cover body, wherein the cover body is adhered to or sutured to the insulation surface while tightly fitted to the insulation surface, and

wherein the insulating material includes titanium dioxide as a pigment.

[Argument by the Applicant concerning the Amendments]
It is explicitly disclosed that the cover body has air permeability and water permeability. If a thin sheet-like cover body 13 shown in FIG. 5 has air permeability and water permeability, a person skilled in the art would find it obvious that such cover body 13 also has translucency.

In response to this argument, the collegial body in the trial (collegial body of trial examiners for the trial against examiner’s decision of rejection; hereinafter referred to as the Collegial Body) made a decision as below as below.

“Air or water can permeate through a woven or non-woven fabric even when a path across such fabric is not straight. However, a light travels in straight lines. It is therefore immature to say that the woven or non-woven fabric “has translucency” when it ensures air and water permeability. It is accordingly not obvious from the Originally Attached Documents that the woven or non-woven fabric “has translucency”.

The Collegial Body issued a Notice of Reasons for Rejection saying that they concluded that the amendment of including the feature that the woven or non-woven fabric “has translucency” corresponds to the addition of new matter and thus violated the Patent Act Article 17-2(3).

The applicant argued against this rejection, but the Collegial Body maintained their conclusion and issued a Trial Decision of Rejection.

<Outline of Appeal Decision>
The Judge of the IP High Court overturned the trial decision by the Collegial Body concluding that the amendment of including the feature that the woven or non-woven fabric “has translucency” does not correspond to the addition of new matter. The reasons mentioned were as follows.

(1) Although the Originally Attached Documents mentions that the cover body has water permeability, there is no explicit mention which is relevant to the matter that the cover body “has translucency”. In the consideration whether the matter that the cover body “has translucency” is obvious from the disclosure in the Originally Attached Documents, it should begin with defining that the cover body “having translucency” means the cover body that has a characteristic to transmit the light through itself from one surface of it to the other (Glossary of Technical Terms in Japanese Industrial Standards 5th Edition).

(2) Considered next is the common general technical knowledge concerning translucency of a woven or non-woven fabric at the time of the filing of the present application. According to the entire gist of the evidence and argument, prior to the filing of the present application, methods to add light shielding property to a woven or non-woven fabric, such as by using special manufacturing process or special materials and by applying special processing to the fabric, had already been taken. Considering this fact, it should have been a common general technical knowledge at that time that such special methods were necessary to add light shielding property to a woven or non-woven fabric. And, it should be appropriate to regard that such woven or non-woven fabric should have “had translucency” without such special methods to add light shielding property applied to it, which must have been a common general technical knowledge at the time of filing the present application.

(3) Having the above (1) and (2) as premises, it is now considered whether the matter that the cover body “has translucency” is obvious from the disclosure of the Originally Attached Documents. In the Originally Attached Documents, there is no explicit mention that the cover body has light shielding property or that any special methods are taken to add light shielding property to the cover body. It is therefore normal to think that a person skilled in the art should understand that no special methods were taken to add light shielding property to the cover body. This accordingly leads to a conclusion that a person skilled in the art naturally believe that the cover body “has translucency”. Therefore, it is obvious from the disclosure of the Originally Attached Documents that the cover body “has translucency”.

(4) In the light of the above, it is concluded that the amendment in question does not introduce a new technical matter in connection with the technical matters which can be led by comprehending any and all disclosures in the Originally Attached Documents. Thus, it is determined that the amendment in question was made within the scope of the disclosure of the Originally Attached Documents.

(5) It is accordingly found that the trial decision was erroneous to determine that the amendment in question introduces a new technical matter and violates the Patent Law Article 17-2(3).

3. Summary

Concerning the matter that a woven or non-woven fabric “has translucency”, the ruling by the Judge of the IP High Court was in favor of the plaintiff saying that, a person skilled in the art should have believed that the fabric has translucency albeit no explicit mention of it because no special methods to add light shielding property to the fabric was taken. It is thus concluded that the amendment in question does not introduce a new technical matter and does not correspond to the addition of new matter.

Such ruling is not new, and may be found as a decent determination in accordance with the current Examination Guidelines for Patent and Utility Model.

This ruling serves as a very useful reference when considering how far an amendment can be accepted or by what logic an amendment can be accepted.

Amendment in the Japanese patent practice, as seen in the example in this article, is very unique and quite different from practices in China and EPO, for example, where requirements on amendment are generally strict.

Should you have any concerns or inquiries about amendment in the Japanese patent practice, please feel free to contact us.

Edited by Makoto Iwata

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