With regard to compliance with the support requirement for specifications, in the “Polarizing Film Manufacturing Method” case (the IP High Court Grand Panel Case No. 2005 [Gyo-ke] 10042), the court held that “…whether or not the descriptions in the claims comply with the support requirement for specifications ought to be judged by considering whether, upon comparison of the descriptions of the claims and the descriptions in the detailed description of the invention, the invention described in the claims is the invention described in the detailed description of the invention, and is within such a scope that those skilled in the art can recognize that the problem of said invention can be solved from the descriptions in the detailed description of the invention, or, if such descriptions or suggestions are lacking, whether the invention is within such a scope that those skilled in the art can recognize that the problem of said invention can be solved in light of the technical common knowledge at the time of filling…”. This judgment criterion has been practically established at the present.
In the case of an “invention defined by a numerical limitation (parameter)”, but not limited to such an invention, whether it is required that “those skilled in the art can recognize that the problem of the invention can be solved” in all the ranges numerically limited always becomes an issue, and if it is strictly construed as being required, compliance with the support requirement for specifications would be denied easily.
In this regard, there are several court cases in which compliance with the support requirement for specifications is determined in a comparatively flexible manner with respect to matters specifying an invention which are not directly related to technical meaning, object, and effect of the invention (for example, “Microwave-assisted peptide synthesis” case [the IP High Court Case No. 2014〔Gyo-ke〕10016 <Presiding Judge SHIMIZU>, “Method for marking composition for oral administration” case (the IP High Court Case No. 2017〔Gyo-ke〕10178 <Presiding Judge OTAKA>, etc., in which, with respect to a secondary object, the court affirmed compliance with the support requirement for specifications in a flexible manner). In these cases, it is understood that the effect on the determination of compliance with the support requirement for specifications is small because the matters specifying the invention have no direct connection with whether or not “those skilled in the art can recognize that the problem of the invention can be solved“.
On the other hand, when matters specifying the invention are directly related to technical meaning, object, and effect of an invention as can be seen particularly in the case of an “invention defined by a numerical limitation (parameter)”, whether it is required that “those skilled in the art can recognize that the problem of the invention can be solved” in all the ranges numerically limited often becomes a significant issue.
In this case, the court determined compliance with the support requirement for specifications based on the premise that those skilled in the art are required to be able to recognize how to solve the problem of the invention in all the ranges numerically limited, and decided that the statements in the claims of the claimed invention do not satisfy the support requirement. However, contrary to this case, there are cases in which the court identified an invention in a purposive way, or the subject matter of an invention in a limited way, and stated that the support requirement for specifications can be considered to be satisfied even if those skilled in the art cannot recognize how to solve the problem of the invention in the range numerically limited.
This case is classified as a case which denied compliance with the support requirement for specifications holding that the description of the invention in the specification is required to contain descriptions such that those skilled in the art can recognize how to solve the problem of the invention in all the ranges numerically limited because the court found that “those skilled in the art cannot recognize that bioavailability of celecoxib is improved in all the ranges numerically limited”. However, it can be understood from the substantial contents of the decision that the court has raised questions about the support requirement for a parameter invention.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: h_takaishi@nakapat.gr.jp
Hideki TAKAISHI (The person in charge of this article)
Attorney at Law & Patent Attorney
Nakamura & Partners
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