JAPAN Trends and Developments Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian, Chuo Sogo LPC
tutes grounds for refusing a patent application but also provides grounds for cancellation in patent opposition proceedings and for invalida- tion in patent invalidation trials. Rulings from past cases In the past, with respect to the support require- ment, there was debate over whether the word - ing in the specification needed to formally include the language of the claims, or whether a more substantive assessment was permissible. In The Nippon Synthetic Chemical Industry Co., Ltd. v Commissioner, Japan Patent Office, Case No 2005 (Gyo-Ke) 10042 (decision rendered on 11 November 2005), the Intellectual Property High Court, in a decision by its Special Division, held as follows: • The support requirement should be evaluated by comparing the claims’ wording with the invention’s detailed description. It’s impor- tant to determine if the invention outlined in the claims aligns with what is described in the detailed explanation. Additionally, one must assess whether a person skilled in the relevant field, using that description, would recognise that the problems addressed by the invention can be effectively resolved. • Additionally, the support requirement is satis- fied if, even in the absence of explicit descrip- tion or suggestion, a person skilled in the art, considering the common technical knowledge at the time of filing, would recognise that the problems addressed by the invention can be resolved. • The burden of proof as to the existence of the support requirement lies with the patent applicant or patentee. At present, these rulings have become firmly established in practice. JFE Steel Corporation
v Nippon Steel Corporation also adopted the same rulings. Determining whether the support requirement was satisfied in JFE Steel Corporation v Nippon Steel Corporation The invention in question relates to a steel pipe pile-type jetty constructed by driving multiple steel pipe piles into the seabed and integrat- ing the heads of these piles with a reinforced concrete superstructure. Among such steel pipe pile-type jetties, those designated as seismic reinforcement facilities are required, under port regulations, to have no piles that have reached full plasticity at two or more points (ie, no piles in which the bending moment has reached the full plastic moment). To ensure that piles located in areas with sig- nificant Level 2 seismic activity meet the neces- sary full plastic performance requirements, one might consider measures such as increasing the wall thickness of the steel pipe piles or enlarg- ing their diameter; however, the effectiveness of such measures is often limited, can sometimes have adverse effects, and leads to increased construction costs, which posed a significant challenge. There are three claims (Claims 1 to 3) of the invention in question. The IP High Court found that, with respect to the inventions defined by Claims 1 and 2, the specification did not contain any examples directly disclosing them. The IP High Court recognised, based on com- mon technical knowledge, that the curvature found in the steel pipe piles described in the specifications would yield nearly identical results despite variations among the embodiments. Consequently, the court concluded that a person skilled in the art – upon reviewing the specified
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