IP High Court, 2023 (Gyo-Ke) 10085 — Image Forming Apparatus (Miyasaka)
更新日：2 日前
Article information
Article type: Case note
Categories: Patents
Topics: Divisional applications, Patent corrections
First published on this website: 2026-10-16
Display and classification checked: 2026-10-17
Case information: 2023 (Gyo-Ke) 10085
IP High Court, 2023 (Gyo-Ke) 10085 — Image Forming Apparatus (Miyasaka)
* Even if a defect in the divisional procedure for a patent application has been overlooked, a “correction” to clarify an ambiguous statement cannot be made to cure it.
If a defect in an amendment or division is overlooked and the patent is registered, the situation may become irreparable!!
There have also been cases in which a violation of the amendment requirements was overlooked and registration took place, breaking the chain of divisional applications. (Osaka High Court, 2002 (Ne) 2776 (Wakabayashi); Tokyo High Court, 2003 (Gyo-Ke) 65 (Shinohara).)
Pair a challenging amendment or divisional application with a safe sibling divisional application!!
(Excerpt from the decision)
“The plaintiffs argue that, because the patent application at issue has a procedural defect in the divisional application, a correction to cure that defect falls within clarification of an ambiguous statement under item (iii) of that paragraph. This argument is understood as follows: ① although the statements in the specification and other documents at the time of registration at issue were within the scope of the statements in the original specification and other documents of the parent application, they were not within the scope of the matters stated in the specification and other documents immediately before division, which had been amended by the time of the patent application at issue; ② as a result, the requirements for a divisional application were not satisfied, but a decision to grant a patent was made without attention being drawn to the problem through a notice of reasons for refusal, leaving the patent at issue defective; and ③ the substantive content of the correction matters being examined is to eliminate that defect by correcting the statements in the specification and other documents at issue from content corresponding to the original specification and other documents of the parent application to content corresponding to the subsequently amended specification and other documents immediately before division. However, ‘the description’ or ‘drawings’ attached to the application as referred to in Article 126(1) of the Patent Act should be understood as the patent specification and drawings at the time of the request for a trial for correction. Accordingly, whether the requirements concerning the purpose of correction under items (ii) and (iii) of that paragraph are satisfied should be determined by comparing the specification and other documents at the time of the request for a trial for correction with those after correction. This is clear both from the wording of the provision and from its purpose (see (2) above). Even if circumstances ①–③ above are found in this case, the defect in the divisional procedure in the relationship between the application specification and other documents immediately before division and the specification and other documents at the time of registration at issue is an issue concerning the application of Article 44 of the Act. That in itself does not mean that the specification and other documents at the time of registration, which are the subject of correction, themselves contain an ambiguous statement (Article 126(1)(iii) of the Act), nor does it constitute an error or incorrect translation under item (ii) of that paragraph. Even assuming that a defect in the divisional procedure for the patent application at issue was overlooked, the plaintiffs’ argument must be regarded as equivalent to seeking to redo the divisional application under the guise of correcting the specification and other documents. No basis can be found to justify this.”
Originally published: 2025-03-10
Original Japanese post: https://ameblo.jp/hideki-takaishi/entry-12889359637.html
English translations of the Japanese source figures
Update history
This history records actual publication, display, and classification changes made on this website.
2026-10-16: The AMEBLO source was first published on this website.
2026-10-17: Added classification, topic tags, article information, translation navigation, related articles, consultation guidance, and SEO. The original article text was not changed.
