Trial and Appeal Practitioners Study Group Report 2024 — Case 4 (Electrical 1)
Updated: 4 days ago
Article information
Article type: Reports and activities
Category: Patents
Topics: Inventive step, Doctrine of equivalents, Added matter, Divisional applications, 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 4 (Electrical 1)
[Inventive step in business-related inventions]
IP High Court, Reiwa 4 (Gyo-Ke) No. 10039
The judgment recognized an “inherent requirement” concerning facility reservations without specifically identifying evidence. Some participants observed that, from the applicant’s perspective, recognition of this requirement and denial of inventive step without evidence made the judgment difficult to predict and felt harsh.
<How to describe problems and effects in the specification>
• Describe the problem section as abstractly as possible, or leave it unwritten and describe the problem in the main text.
• Conversely, describing individual relationships among problems, effects and technical means too specifically may prevent the patent’s scope from having breadth.
• If the doctrine of equivalents is contemplated, the problem section should also state: “The essence of this invention lies here.”
• Describing the problem too specifically may result in a proposed divisional application being summarily rejected as adding new matter.
Original article (2025-07-27):
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2026-10-11: First published the LinkedIn original on this site and set the classification, article information, and consultation link.
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