Trial and Appeal Practitioners Study Group Report 2024 — Case 2 (Chemistry 1)
Updated: 3 days ago
Article information
Article type: Reports and activities
Category: Patents
Topics: Novelty, Added matter, Examination and appeal practice
First published on this site: 2026-10-11
Display/classification checked: 2026-10-11
Trial and Appeal Practitioners Study Group Report 2024 — Case 2 (Chemistry 1)
[Matters equivalent to disclosure in the earlier application’s specification; substantial identity]
IP High Court, Heisei 26 (Gyo-Ke) No. 10097 — Flat nonaqueous-electrolyte secondary battery
• A “new effect” under the expanded prior-application rule need not be a “remarkable” or “advantageous” effect required for inventive step. Improvement in the degree of an effect suffices; the level may be lower than for inventive step.
• Regarding the relationship between disclaimer amendments commonly used to avoid lack of novelty and assessment of minor differences under the expanded prior-application rule, a participant questioned whether, following a disclaimer amendment, consideration extends to whether the excluded and remaining portions produce a new effect for this assessment.
(Excerpt from the judgment, translated)
…Difference A identified in the trial decision is, in short, a quantitative difference between the invention at issue and Ko 1 concerning ① the number of opposing faces and ② the relative sizes of their facing area and the gasket opening area. …Both use, in a flat nonaqueous-electrolyte secondary battery, an electrode assembly consisting of multilayered positive and negative plates having active-material-containing layers, with separators between them. This increases the total facing area of those layers and the discharge capacity under heavy load. They share the problem and its solution. …The lack of substantial change in heavy-load discharge capacity when the number of opposing faces exceeds five, and its diminishing increase in some cases, may be unexpected. However, the invention aims to increase heavy-load discharge capacity and specifies a lower limit on the number of opposing faces, not an upper limit. Failure of capacity to increase proportionately with the number of faces therefore cannot constitute a new effect of the invention.
Original article (2025-07-22):
Update history
This history records actual publication, display, and classification changes made on this site.
2026-10-11: First published the LinkedIn original on this site and set the classification, article information, and consultation link.
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