August, 2016｜News Letter

1. To What Extent should Correction of Mistranslation of Claimed Term After Grant be Accepted?

Areva GMBH v. Commissioner of JPO, Case No. 2015 (Gyo-Ke) 10216 (Decision rendered on August 29, 2016)

The Patentee, Areva, obtained a patent relating to a process for chemically decontaminating a radioactively contaminated surface of a component in 2014. Soon after the grant, Areva filed a correction trial with the JPO in 2014. The JPO dismissed the Areva’s demand in 2015 on the grounds that the correction substantially changed the scope of the granted claims, followed by the Areva's appeal against the JPO's decision to the IPHC in 2015.

The granted Claim 1 of the Areva’s patent at issue claims as follows:
“A process for chemically decontaminating a surface of a component of a coolant system of a nuclear power plant, the process comprising the following steps:
detaching an oxide layer from the component surface with a first water-soluble treatment solution … in a first treatment stage, the oxide layer having been formed on the component as a result of corrosion of component material; and
treating the component surface … with a second water-soluble treatment solution containing an active component … in a subsequent, second treatment stage,
wherein the active component is formed of at least one anionic surfactant selected from the group consisting of sulfonic acids, phosphoric acids, carboxylic acids and salts of these acids, and … ”.

One of the main issues in this case lied in to what extent a correction of mistranslation of the claimed term after the grant should be accepted. The IPHC answered to the issue as follows:

First, Areva demanded a correction of the term “phosphoric acids” to “phosphonic acids” to the JPO on the grounds that the original specification of the PCT application of the patent at issue claimed “phosphonic acids”, thus “phosphoric acids” in the granted claims were clear to be an incorrect translation. However, the JPO did not accept the Areva’s demand since the correction was substantially to change the scope of the granted claims even though the original specification of the PCT application of the patent at issue claimed “phosphonic acids”.

Then, Areva appealed to the IPHC, and the IPHC reviewed the specification before the correction in detail, and found that the term “phosphoric acids” was used 11 times, while the chemical formula “ROP(OH)2”, which means “phosphonic acids”, was used 6 times and there was a description that “In the case of the use of octadecylphosphonic acid as the active ingredient component” (NOTE: octadecylphosphonic acid is an example of “phosphonic acids”). On the basis of the above findings, the IPHC decided as below:
Those skilled in the art could have understood that either “phosphoric acids” or “phosphonic acids” was incorrect, thus there was a possibility that “phosphoric acids” in the granted claims would be a mistranslation of “phosphonic acids”. Nevertheless, it was not a matter of course that those skilled in the art could have noticed that the term “phosphoric acids” in the granted Claim 1 was an incorrect translation of “phosphonic acids” and understood that the claimed term “phosphoric acids” should be read as “phosphonic acids”, since the meaning of the term “phosphoric acids” in the granted Claim 1 itself was clear and no unnatural point which suggested the mistranslation was found in the granted Claim 1 even from a technological perspective. Accordingly, the correction of “phosphoric acids” to “phosphonic acids” substantially changed the scope of the granted claims.

Conclusively, the IPHC dismissed the Areva’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 CommentsA correction of mistranslation of the claims after the grant is not acceptable under the Japanese Patent Law if the correction substantially changes the scope of the granted claims (Art. 126 (4)), and the criteria of whether the correction falls into the substantial change or not is rather strict as shown in the above decision.
Accordingly, it is important to proofread or check again the translation of the claims when an allowance is issued.

In August 2016, the IPHC handed down 9 decisions including the above case on patent, and overturned the previous decisions in 2 cases.

In August 2016, the IPHC handed down 9 decisions on trademark, and overturned the previous decisions in 1 case.