Tokyo District Court, 2002 (Wa) 23687 [Telephone Card] <Iimura>
更新日：6時間
Article information
Article type: Case note
Category: Patents
Topics: Divisional applications
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2025-05-30 (Japan time). Full English translation.
Tokyo District Court, 2002 (Wa) 23687 [Telephone Card] <Iimura>
*The rights holder's arguments during prosecution of the parent of a divisional application were considered in construing the claim language.
*Consistent with Osaka District Court, 2005 (Wa) 12207.
“If an applicant intentionally deletes a portion of the original specification and drawings of the parent application by amendment, it is impermissible, in making a divisional application, to expand the device to encompass matters already deleted.”
(Excerpts from the court's reasoning)
The device at issue was the subject of a divisional application filed from the parent application after its original specification and drawings had been amended and the application published for opposition.
Where the parent application's original specification or drawings have thus been amended and published for opposition before the divisional filing, the device in the divisional application must be one described both in the original specification or drawings of the parent application and in its amended published specification or drawings.
Accordingly, it is natural that determining the “scope of utility model registration claims” in the divisional application also requires construction taking the parent application's prosecution history into account.
In particular, if the applicant intentionally deletes a portion of the original specification and drawings of the parent application by amendment, it is impermissible, in making a divisional application, to expand the device to encompass matters already deleted. The “scope of utility model registration claims” in the divisional application must therefore also be construed consistently with that principle.
Translator’s notes (editorial)
The author uses “patentee” in the introductory source although the quotation concerns utility model claims; rendered neutrally as rights holder in that introduction.
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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.
