November, 2017｜News Letter

1. How should “Matter Equivalent to Description in Prior Application” in Examining Sameness of Invention be Determined?

DIC Corporation v. Commissioner of JPO, Case No. 2016 (Gyo-Ke) 10225 (Decision rendered on November 29, 2017)

The Patentee, DIC obtained a patent relating to a polyarylene sulfide resin composition in 2015. Against the DIC’s patent, SK Chemicals Co., Ltd. (Opponent) filed an opposition with the JPO in 2015. Having reviewed the opposition, the JPO notified the reason for revocation to DIC, and DIC filed an argument requesting corrections of the granted claims 1 to 7. The JPO admitted the corrections and rendered a decision of maintaining the corrected claims 1 to 3, but rendered a decision of revoking the corrected claims 4 to 7 on the grounds that the inventions of the claims 4 to 7 were substantially disclosed in the prior application B in 2016. DIC filed an appeal against the JPO’s decision of revoking the corrected claims 4 to 7 to the IPHC in 2016.

Claim 4 of the DIC’s patent at issue after the correction claims as follows:
A polyarylene sulfide resin composition comprising a polyarylene sulfide (PAS) resin having a terminal group represented by the following general formula (1):

wherein … ; and
iodine atoms at a ratio within a range of 0.01 to 1,200 ppm relative to the polyarylene sulfide resin.

The main issue in this case related to how “the matter equivalent to a description in a prior application” in examining the sameness of the invention should be determined. The IPHC answered to the issue as follows:

First, having compared the corrected claim 4 at issue with the disclosure of prior application B, the IPHC found the prima-facie difference that the former specified the amount of iodine, while the latter did not specify it. (There was no dispute between both parties on this point.) Further, having reviewed prior art references, the IPHC found (i) that it was well known from some prior art references published before the priority date of the patent at issue that PAS resin having a low content of iodine of below 1,200 ppm could be prepared; and (ii) that, on the basis of common technical knowledge, some conditions, such as a temperature and pressure when polymerized, a polymerization time, the kind and amount of polymerization inhibitor and the timing of adding the inhibitor and the like, could be generally required to prepare the PAS resin having a low content of iodine.
On the basis of the above findings, the IPHC decided that none of the prior art references clearly showed specific conditions required for preparing the PAS resin having a low content of iodine, and thus the conclusion that the specification of the prior application B disclosed the PAS having an iodine amount of 1,200 ppm or below could not be directly lead from the disclosures of the prior art references.
In this connection, during the opposition procedures, the Opponent submitted an experimental report showing that the PAS resin prepared according to Example 5 of prior application B had an iodine content of 850 ppm. However, the IPHC did not accept the experimental report for not being a faithful experiment by pointing out (i) that the name of polymerization inhibitor used was erroneously identified, and (ii) that it was unknown that what kind of effect could be made by “N2 pressurization” used in the experiment, which was not described in prior application B.

Conclusively, the IPHC upheld the DIC’s appeal and cancelled the JPO’s decision.

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

K&P’s Comments As seen from the above decision, the IPHC rather strictly decided on “the matter equivalent to a description in a prior application”. Even though it was generally well known to specify the iodine content to below 1,200 ppm itself, and experimental data showing that the PAS resin satisfied the iodine content was submitted, the IPHC did not acknowledge the sameness on the grounds that there are other possibilities not to satisfy the iodine content in the prior application.

(by Katsumasa OSAKI, Patent Attorney)

In November 2017, the IPHC handed down 13 decisions including the above case on patent, and overturned the previous decisions in 5 cases.

In November 2017, the IPHC handed down 5 decisions on trademark, and overturned the previous decisions in 2 cases.

In November 2017, the IPHC handed down no decision on industrial design.