Case Introduction: Whether Amendment Falls under Addition of New Matter

1. Introduction

We will introduce a court decision in which one of issues was whether an amendment made at the examination stage falls under addition of new matter. The decision of this case is one of the subjects of study in Trial and Appeal Practitioner Study Group (2021) organized by Trial and Appeal Department of the Japan Patent Office. The Trial and Appeal Practitioner Study Group deliberates on analysis of appeal/trial decisions and courts’ rulings, and is participated by practitioners including employees of intellectual property departments in companies, patent attorneys, lawyers, chief appeal examiners and appeal examiners of the Japan Patent Office.

2. New Matter (Patent Act Article 17-2(3))

Patent Act Article 17-2(3) provides that an amendment of the application shall not go beyond the scope of the matters disclosed in the initial description, etc.

Regarding the scope of “the matters disclosed in the initial description, etc.”, the following criteria for judgement was set forth in the Intellectual Property High Court (hereinafter “IP High Court”) Grand Panel Case No. 2006 (Gyo-ke) 10563, “the Solder Resist Case”.

“the matters disclosed in the description or the drawings” mean technical matters that a person skilled in the art can understand based on all statements in the description or the drawings. In a case where an amendment does not add any new technical matters to the technical matters that can be understood in this manner, the amendment can be deemed to be made “within the scope of the matters disclosed in the description or the drawings”.

It can be said that, since “the Solder Resist Case”, determinations on new matter have been made based on this criteria for judgement in examinations, trials, and lawsuits.

3. Case Introduction: IP High Court Case No. 2019 (Gyo-ke) 10026, “Fluid Pressure Cylinder and Clamp Device”

(1) Summary of the Case

The plaintiff is a patentee of the present patent (Patent No. 6291518), entitled “Fluid Pressure Cylinder and Clamp Device”.

During the examination of the present patent, the plaintiff amended claim 1 (hereinafter, referred to as “present amendment”). Specifically, the present amendment deletes “a fluid pressure introduction chamber” and “a fluid pressure introduction passage” that act, as constituent elements of “a valve opening and closing mechanism”, to hold a valve body in an advanced state toward an output member. Instead, the present amendment added “an elastic member” that acts, as a constituent element of “the valve opening and closing mechanism”, to hold a valve body in an advanced state toward an output member. Thus, the invention of the present patent encompasses a configuration to hold the valve body in the advanced state by “the elastic member” alone without “the fluid pressure introduction chamber” and “the fluid pressure introduction passage”.

The defendant filed a Request for Patent Invalidation Trial against the present patent (Invalidation No. 2018-800058). This patent invalidation trial brought a decision to invalidate the present patent on the ground that the present amendment does not meet the requirement for amendment (new matter) and the present invention does not meet the requirement for supportive description.

The plaintiff appealed to the IP High Court, seeking rescission of this trial decision.

(2) Judgement of the Court

The following introduces a ruling made by the IP High Court that the present patent should be invalidated regardless of whether the requirement for supportive description is satisfied on the ground that the present amendment falls under addition of new matter.

It should be noted that the following statement of the ruling was appropriately modified by us for easy understanding of the same.

Furthermore, FIGS. 1 and 11 of the present patent are shown below for reference. FIG. 1 is a cross-sectional view of a clamp device 1 in a first embodiment. FIG. 11 is a cross-sectional view of a second valve opening and closing mechanism 50A in a second embodiment. The second valve opening and closing mechanism 50A in the second embodiment is a configuration partially modified from the second valve opening and closing mechanism 50 in the first embodiment.

The initial invention of the present case is directed to downsize a fluid pressure cylinder, improve reliability of positional detection of and durability of an output member, etc.

As a result of the present amendment, the mechanism to hold the valve body in the advanced state toward the output member according to the invention of the claims of this case also encompasses a configuration to provide the elastic member alone without the fluid pressure introduction chamber and the fluid pressure introduction passage for utilizing a fluid pressure of a fluid chamber.
The initial description of the present case discloses, as the second embodiment, a configuration to (i) mainly perform hydraulic biasing by providing a hydraulic introduction chamber 53 and a hydraulic introduction passage 54 and (ii) to supplementary perform biasing by a compression coil spring 53a. Furthermore, the initial description discloses that the second embodiment is a configuration that can bring the same effect as that of a hydraulic cylinder 1 in the first embodiment.

The initial description of the present case discloses that the first embodiment has an effect to provide advantages in reliability and durability. Furthermore, the reason for this includes that, in the hydraulic cylinder 1 in the first embodiment, a hydraulic pressure within an unclamping hydraulic chamber is introduced into the hydraulic introduction chamber and is applied to the valve body, and thereby the valve body can be held to protrude toward the output member. In view of these disclosures, the hydraulic introduction chamber 53 and the hydraulic introduction passage 54 in the second embodiment are necessary constituent elements to exhibit the effect to provide advantages in reliability and durability.

Furthermore, the initial description of the present case discloses that the first embodiment has another effect to enable downsizing of the fluid pressure cylinder. It is not specified whether this effect has any relation to use of the hydraulic pressure. However, it is natural to consider that providing the hydraulic introduction chamber 53 and the hydraulic introduction passage 54 in the second embodiment is related to downsizing of the hydraulic cylinder in view of the following disclosure:

regarding the valve opening and closing mechanism, for opening and closing an air passage within a cylinder body, that comprises the valve body, a valve seat, the fluid pressure introduction chamber, and the fluid pressure introduction passage, this mechanism can be embedded in the cylinder body by the valve body being embedded in a mounting hole of a clamping body, and thereby it is possible to downsize the fluid pressure cylinder.

That is, it can be said that a person skilled in the art cannot arrive at a configuration to intentionally omit or eliminate the main configuration related to the hydraulic pressure from the configuration of the second embodiment, to thereby perform the biasing by the compression coil spring 53a alone, which is merely supplemental biasing. It is even more so considering that the hydraulic introduction chamber 53 and the hydraulic introduction passage 54 are described in relation to the effects of the invention in the second embodiment as discussed above.

Other embodiments in the initial description of the present case are configurations to hold a valve body in an advanced state toward an output portion by a fluid pressure introduction chamber and a fluid pressure introduction passage alone. The configuration to omit or eliminate the hydraulic introduction chamber and the hydraulic introduction passage is not disclosed in any other part of the initial description of the present case.

Accordingly, it is not a technical matter that can be understood by a person skilled in the art based on all statements in the initial description, etc. of the present case to hold the valve body in the advanced state toward the output member by the elastic member alone without providing the valve opening and closing mechanism with the fluid pressure introduction chamber and the fluid pressure introduction passage. As an amendment to add a new matter itself is a reason for invalidation, the present patent should be invalidated regardless of whether the requirement for supportive description is satisfied.

4. Consideration

In the subject suit against the trial decision, judgement on new matter was made based on the criteria for judging whether an amendment adds a new technical matter, as in other cases since “the Solder Resist Case”.

As discussed above, the IP High Court made a judgement that “a skilled person cannot arrive at the configuration to intentionally omit or eliminate the main configuration related to the hydraulic pressure, to thereby perform the biasing by the compression coil spring alone, which is merely supplemental biasing”. In our view, this judgement was made based on considerations that the initial description neither discloses nor suggests the configuration to cause the valve body to advance by the elastic member alone and that the hydraulic introduction chamber and the hydraulic introduction passage are necessary to solve problems of the present invention. Furthermore, we consider that this judgement was made based on a determination that the configuration to provide the elastic member alone according to the present amendment is directly associated with solving the problems.

That is, in our view, in order for acceptance of addition of the configuration to provide the elastic member alone without the hydraulic introduction chamber and the hydraulic introduction passage, it was necessary not only to describe this configuration in the initial description but also to state, in the initial description in an understandable manner to a person skilled in the art, that this configuration can solve the problems (without the hydraulic introduction chamber and the hydraulic introduction passage).

Accordingly, in order to avoid a situation where your future amendment is determined to be addition of new matter, we consider it useful to include, in a modified embodiment in an application to be filed, a wide variety of configurations that can solve the problems. Furthermore, it is considered to be useful to take into account the minimum necessary configuration of the invention and set a problem(s) to be solved by the invention consistent with the minimum configuration.

Edited by Hiroko Iwatsuki

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