2017 (Gyo-Ke) 10167 [Laminated Film] <Mori>
Updated: 6 hours ago
Article information
Article type: Case note
Category: Patents
Topics: Numerical limitations and parameters, Added matter
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2025-04-07 (Japan time). Full English translation.
2017 (Gyo-Ke) 10167 [Laminated Film] <Mori>
*The scope of exclusion under Article 29-2 is broader than the scope that would not constitute added new matter based on the earlier application's specification.
⇒ Different from the generally stated purpose of Article 29-2 of the Patent Act!!
*The difference was that the earlier invention lacked the numerical thickness limitation “0.01–100 μm.”
(Excerpt from the court's reasoning)
The plaintiff argues that Article 29-2 of the Patent Act was established for convenience in examining later applications. Citing the Solder Resist Grand Panel judgment, the plaintiff further argues that its construction of “within the scope of matters described in the specification or drawings” was a determination of the general interpretation of that language in Article 17-2(3), and that, when interpreting “is identical to” the invention in the “specification, claims” “or drawings” under Article 29-2, a defining feature of a later invention can be said to fall within the technical matters derived by comprehensively considering all descriptions in the specification or drawings originally attached to the earlier application only where that feature is self-evident from the descriptions in the specification and other documents originally attached to the earlier application. …Even if the scope of “is identical to” under Article 29-2 … differs from the scope of permitted amendments under Article 17-2(3), this is the result of construing each provision according to its purpose, and no resulting difficulty is found. Thus, there is little reason to adopt the same interpretation as that governing permissible amendments under Article 17-2(3) when determining the requirements for exclusion of a later application by an earlier application under Article 29-2.
<Reference> Commentary on the Patent Act: “If all inventions described in the original specification and drawings—the maximum scope that can be incorporated into the claims by amendment—are given the effect of excluding later applications, the later application can be processed without waiting for either a request for examination or the examination of the earlier application ….”
⇒ According to the generally stated purpose of Article 29-2, the scope of the expanded earlier application is the same as the scope relevant to addition of new matter.
This judgment differs!!
Update history
The first-published date remains unchanged. Display maintenance, classification changes, related-article updates, and text corrections are recorded separately.
November 1, 2026: First published on this website.
November 2, 2026: Added article information, classification, topics, language navigation, related articles where the same case was confirmed, consultation guidance, and SEO. The original text and first-published date were preserved.
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