September, 2015｜News Letter

1. How should Issue about Whether Claimed Feature which is not Explicitly Disclosed in Prior Application is Substantially Disclosed therein be Examined?JFE Steel Corporation v. Nippon Steel & Sumitomo Metal Corporation, Case No. 2014 (Gyo-Ke) 10201 (Decision rendered on September 3, 2015)

The Patentee, Nippon Steel & Sumitomo Metal (NSSM), obtained a patent relating to a steel sheet having a zinc-based alloy plated layer in 2004, against which JFE Steel filed an invalidation trial with the JPO in 2013. During the trial proceedings, NSSM demanded a correction of the claims, and the JPO admitted the correction and dismissed the JFE’s demand in 2014, followed by JFE’s appeal against the JPO’s decision to the IPHC in 2014.

Corrected Claim 1 of the NSSM’s patent at issue claims as follows:
A steel sheet for hot press which is heated to 700 to 1,000°C, pressed and quenched, the steel sheet having a zinc-nickel alloy plated layer, a zinc-cobalt alloy plated layer, a zinc-chromium alloy plated layer, a zinc-aluminum-magnesium alloy plated layer, a tin-zinc alloy plated layer or a zinc-manganese alloy plated layer on the surface of the steel sheet, wherein the plated layer has an oxide coating preventing zinc from vaporizing when heated on the surface of the layer.

One of the main issues in this case lied in how the issue about whether the claimed feature which is not explicitly disclosed in a prior application is substantially disclosed therein should be examined. The IPHC answered to the issue as follows:

First, having reviewed prior application (p.a.) 8, the IPHC found that the prima-facie difference between the claimed invention of the patent at issue and the invention disclosed in p.a. 8 was that the former specified the plated layer to be “a zinc-nickel alloy plated layer, a zinc-cobalt alloy plated layer, a zinc-chromium alloy plated layer, a zinc-aluminum-magnesium alloy plated layer, a tin-zinc alloy plated layer or a zinc-manganese alloy plated layer”, while the latter specifically disclosed only “zinc or zinc-aluminum coating” as the plated layer. The IPHC further found (i) that p.a. 8 generally stated that any alloy containing zinc as the base element might be used as a “zinc-based alloy” for the plated layer, and (ii) that p.a. 8 only exemplified “zinc-iron”, “zinc-aluminum” and “zinc-iron-aluminum” as the “zinc-based alloy”.
On the basis of the above findings, the IPHC concluded that it could not be said that p.a. 8 disclosed or substantially disclosed the claimed invention of the patent at issue having the above specific plated layer on the grounds that it was generally difficult to anticipate from the ingredients and the composition of an alloy what properties the alloy had, and it was generally known that the properties of different alloys varied depending on the ingredients and the composition even if they were produced by the same preparation method.

In this connection, during the court proceedings, JFE asserted that each of the above specific plated layers had been well known as a zinc-based alloy plated layers on a steel sheet and thus it was substantially disclosed in p.a. 8. However, the IPHC rejected the JFE's assertion by pointing out that although each of the above specific plated layers was generally well known as a zinc-based alloy plated layer on a steel sheet, it could not be said that it had been well known that each of the above specific plated layers was used for a steel sheet for hot press which was heated to 700 to 1,000°C, pressed and quenched.

Conclusively, the IPHC dismissed the JFE's appeal, and upheld the JPO's decision.

An appeal to the Supreme Court was filed against this decision, and thus the decision is NOT final and binding.

K&P’s CommentsUnder Article 29^bis of the Japanese Patent Law, a claimed invention is not allowed if it is disclosed or substantially disclosed in an application which was filed before the filing date of the claimed invention and published after the filing date of the claimed invention, which is similar to EPC 54(3).
As seen from the above decision, in order to effectively argue that any claimed feature which is not explicitly disclosed in a prior application is substantially disclosed therein, you should show that such a feature was well known in the very identical subject matter to the claimed invention.

In September 2015, the IPHC handed down 14 decisions including the above case on patent, and overturned a previous decision in 2 cases.

In September 2015, the IPHC handed down 8 decisions on trademark, and overturned previous decisions in 2 cases.