| [17/E] Applicant Bears Burden of Proving That
Support-by-Description Requirement Is Met - IP High Court, Nov. 11,
2005 |
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Nippon
Synthetic Chemical Industry Co., Ltd v. Director-General of the Patent
Office
The Intellectual Property High Court ruled on Nov. 11, 2005 that,
in an appeal against a JPO Board's decision, it is the applicant/patentee that
bears the burden of proving that the support-by-description requirement
stipulated by Section 36(6)(i) of the Patent Law is met. It also ruled that the
support-by-description requirement cannot be met in a patent application by
submitting, after the filing of the application, experimental data to externally
supplement the content of the description, stating that otherwise it would go
against the principle of the Patent Law, which grants patents for inventions on
condition that they are disclosed to the
public.
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| [15/E] No Extension of Patent Term Available upon Patent
for Dosage Form (IP High Court, Oct. 11, 2005) |
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The
Intellectual Property (IP) High Court affirmed the decision by the JPO's trial
board rejecting an application for patent term extension of a patent about a
dosage form of a medical drug. The patented dosage form at issue is a
microcapsule-type composition, which releases an active ingredient, buserelin
acetate, over one month or more. A product containing the active ingredient had
already been approved by the health authorities as a marketable medical drug for
the same indication as that of the patented dosage form. The IP High Court
concluded that the later approval of the patented dosage form did not meet the
requirement that "the approval was necessary for the patented invention to be
put into practice" as provided by Section 67(2), and also by Section 67-3(1)(i)
of the Patent Law, stating that the requirement should be construed as requiring
that the approval was necessary with regard to its active ingredient and
indication (i.e., intended effect).
According to this ruling, it should
be noted that once a medical drug has been approved with regard to an active
ingredient for an indication, no extension of patent term is available to a
patented invention of a new dosage form (composition, specially designed
container, etc.) of the same active ingredient used for the same
indication. |
| [D/E1] Application of the Doctrine of Equivalents by
Japan’s Courts |
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The Supreme
Court, H6(O)1083, February 24, 1998.
The doctrine of equivalents is
applicable in Japan in finding infringement of a patent. In the captioned case,
the Supreme Court set forth for the first time in Japan the requirements for
finding infringement under the doctrine of equivalents. To note is that not only
the specification but also the prosecution history constitute the basis of
finding/denying an infringement under the doctrine of equivalents. Deciding the
case, the Court wrote as follows.
"In assessing, in patent infringement
litigation, whether or not the product or process the defendant is making or
using falls within the technical scope of the patented invention, the technical
scope must be determined based on the claims appended to the specification of
the granted application. When a part of what is defined by a patented claim
differs from a corresponding part of the product or process, the product or
process cannot be said to fall within the technical scope of the patented
invention. However, even when there is such a part in what is defined by the
patented claim, the product or process may properly be considered as being
equivalent to what is defined by the patented claim and falling within the
technical scope of the patented invention, if:
(1) that part is not an
essential part of the patented invention,
(2) replacing the part with the
corresponding part of the product or process would still allow the invention to
fulfill its objective and exhibiting the same function/effect,
(3) such
replacement could have easily been conceived by a skilled person in the
pertaining art at the time the product or process was made or used,
(4) the
product or process is neither the same as, nor what would have easily been
conceived by a skilled person from, a technology that was publicly known at the
time of filing the application of the invention upon which the patent was
granted, and
(5) no particular circumstance is found, e.g., that the
product or process was excluded from the scope of the claim in the prosecution
of the application."
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