[IP Practice Online] Introduction of important patent judgments newly included in "Patent Case Law Encyclopedia, 4th edition" (Chizai Juku)
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Article information
Categories: Patents
Topics: Patent drafting and translation / Support requirement / Enablement / Clarity / Inventive step / Claim interpretation
Published on this website: 2026-09-29
[IP Practice Online] Introduction of important patent judgments newly included in "Patent Case Law Encyclopedia, 4th edition" (Chizai Juku)
(Hideki Takaishi, Nakamura & Partners)
[Some case introductions omitted]
1. Central message of the video
How the "problem of the invention" is set in the specification affects all of the support requirement, enablement, inventive step, addition of new matter, claim interpretation and satisfaction of claim requirements.
Thus, this is not merely about writing clear Japanese. The problem, effects, examples and claim wording should be selected by working backward from the purposes of:
• Making the support requirement easier to satisfy;
• Making motivation to combine with cited inventions easier to deny;
• Preserving freedom for divisionals and amendments;
• Making it easier to bring future accused products within the claims; and
• Avoiding unnecessary limiting interpretations.
2. Enablement and support (from 5:56)
• There is a judgment accepting proof of enablement through simulation.
Particularly important are avoiding casually making "improvement" the problem and stating a limited problem that can reliably be recognized from the examples.
3. Clarity (from 21:54)
[Omitted]
4. New matter, divisionals, priority and corrections (from 26:18)
• Divisional and amendment requirements are treated similarly in assessing new matter.
• Even without new matter, a "substantive change" through correction or amendment may be an issue.
In practice, it is important not to casually change the specification upon division and to individually list multiple problems, effects and configurations in the original specification.
5. Novelty, public working and inventive step (from 45:48)
• Even exclusive sales may constitute public working without confidentiality obligations such as an NDA.
• There is a tendency to regard merely being "obvious to try" as insufficient to deny inventive step.
6. Claim interpretation, equivalents and infringement (from 1:05:15)
• There is a case finding that even an integral structure satisfies "coupled to."
7. Conclusions
• Setting the specification's problem affects disclosure requirements, inventive step, new matter and claim interpretation across the board.
• Rather than casually choosing "improvement," also consider "provision of a new configuration or alternative means."
• Individually describe multiple problems, effects, configurations and embodiments in the original specification to preserve scope for future divisionals and amendments.
• Wording such as "all," "always," "adjust," "regulate" and "substantially" may cause future limiting interpretations or new-matter issues; use it with its legal effects in mind.
• In litigation, understand opposing lines of case law as well as favorable judgments, and present multiple alternative legal arguments.
Originally posted on LinkedIn: https://www.linkedin.com/feed/update/urn:li:activity:7510140721706737665/
