Reiwa 4 (Gyo-Ke) 10125[Composition Containing 2,3-Dichloro-1,1,1-Trifluoropropane, 2-Chloro-1,1,1-Trifluoropropene, 2-Chloro-1,1,1,2-Tetrafluoropropane, or 2,3,3,3-Tetrafluoropropene] <Hibiku Shimizu>
Updated: 1 hour ago
Article information
Type: Case note
Classification: Patents
Topics: Patent corrections, Added matter
First published on this site: 2023-12-21
Case number: Reiwa 4 (Gyo-Ke) 10125
Display and classification checked: 2026-11-14
Reiwa 4 (Gyo-Ke) 10125 [Composition Containing 2,3-Dichloro-1,1,1-Trifluoropropane, 2-Chloro-1,1,1-Trifluoropropene, 2-Chloro-1,1,1,2-Tetrafluoropropane, or 2,3,3,3-Tetrafluoropropene] <Hibiku Shimizu>
Disclaimer Claims and Correction Requirements
(1) Excluding only the portion identical to an earlier-filed invention or prior art is not a correction requirement.
(2) The court found that the correction excluded a portion likely to be assessed as substantially identical to prior art supporting lack of inventive step.
⇒ An impact on correction requirements?
(1) was held for the first time!!
Assessment of the holding in (2) may stir controversy ...
(Extract from the court's reasoning)
... When correcting the claims, ... there is no requirement to exclude only the portion identical to an earlier-filed invention or only the portion identical to prior art publicly known before the patent application. Where a correction is made ‘within the scope of matters described in the specification, claims, or drawings,’ that is, where it introduces no new technical matter in relation to the original technical matters, it is difficult to envisage unforeseen harm to third parties from the correction. It should therefore be said to be inappropriate to add requirements of the kind asserted by the defendant when interpreting the correction requirements of that paragraph.
The defendant also argues that the content of a corrected invention cannot be freely defined in the form of a disclaimer claim. The correction at issue ... followed an advance notice of a trial decision finding invalidity grounds of lack of novelty and inventive step based on Ko 4. However, ... Ko 4 states ... ‘This concerns an advantageous method of directly preparing ... hydrofluorocarbons from a halocarbon mixture containing HCFC-225cb. ... The method is performed without converting a substantial quantity of that HCFC-225cb into other compounds’ ([0012]) and ‘A preferred mixture according to the invention is a mixture containing the compound HCFC-225cb. In another preferred embodiment, the mixture consists essentially of approximately 1 to approximately 99 weight percent HCFC-225cb ...’ ([0015]). In light of those passages, the correction can be said to seek to exclude the portion likely to be assessed as substantially identical to the invention described in Ko 4. It therefore cannot be said to freely define the corrected invention's content independently of the prior-art invention described in Ko 4.
Originally published: 2023-12-21
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Update history
The first publication date and update dates are recorded separately. Display maintenance does not mean that the legal analysis was re-verified.
2026-11-14: Display and classification maintenance (article information, issue tags, language/SEO links, related articles, and consultation path added).
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