March, 2019｜News Letter

1. Whether Claims Cancelled During Prosecution may be Revived After Grant

Sekisui Chemical Co., Ltd. v. Commissioner of JPO, Case No. 2018 (Gyo-Ke) 10023 (Decision rendered on March 14, 2019)

The Patentee, Sekisui Chemical, obtained a patent relating to a cushion material for polishing in 2016. Against the Sekisui’s patent, an Individual (Opponent) filed an opposition with the JPO in 2016. Having reviewed the opposition, the JPO notified the reason for revocation to Sekisui, and Sekisui filed an argument and a demand for corrections including cancelling Claims 1 and 2 and amending Claims 3 and 4. The JPO admitted the corrections on Claims 1 and 2, while dismissed the corrections on Claims 3 and 4 on the grounds that the corrections did not restrict the scope of the claims, but modified it, and rendered a decision of rejecting the opposition on Claims 1 and 2 and revoking the granted Claims 3 and 4 before the correction on the grounds of lacking inventive step in 2017. Sekisui filed an appeal against the JPO’s decision on Claims 3 and 4 to the IPHC in 2018.

The granted Claim 3 of the Sekisui’s patent at issue claims as follows:
A cushion material for polishing having a laminated sheet in which a formed sheet and a non-formed, synthetic resin sheet are integrally laminated, and an adhesive layer which is integrally laminated on one of surfaces of the laminated sheet; wherein the laminated sheet has a thickness of 0.3 to 3.0 mm, … .

The corrected Claim 3 of the Sekisui’s patent at issue claims as follows:
A cushion material for polishing having a laminated sheet in which a formed sheet and a non-formed, synthetic resin sheet are integrally joined via an intermediate layer, and an adhesive layer which is integrally laminated on one of surfaces of the laminated sheet;
wherein the laminated sheet has a thickness of 0.3 to 3.0 mm, … .
<The corrected part is underlined and emphasized in bold>

One of the main issues in this case related to whether the claims cancelled during the prosecution may be revived after the grant of the patent through a trial for correction. The IPHC answered to the issue as follows:

The IPHC reviewed the descriptions of the specification of the patent at issue including the embodiments of the inventions and the manufacturing process thereof in detail, and found that specific definitions of the terms “integrally laminated” and “integrally joined via an intermediate layer” were not provided, but that the former term was used for a structure where two layers were directly overlaid and integrated with each other not via other layer between the two layers, while the latter term was used for a structure where two layers were joined via a different intermediate layer between the two layers.
The IPHC further reviewed the prosecution history of the patent at issue, and found that the previous Claims 5 and 6, which had been deleted for overcoming the rejection of not satisfying support requirement during the prosecution, equated to the corrected Claims 3 and 4, respectively.

On the basis of the above findings, the IPHC decided (i) that it was acknowledged that the previous Claims 5 and 6 were intentionally excluded from the scope of the claims, and thus, if the corrections of Claims 3 and 4 were accepted, such corrections substantially revived the deleted subject matters, which was at risk for causing unforeseen disadvantage to a third party, and therefore (ii) that it was reasonable to interpret that the term “integrally laminated” did not include a structure where two layers were integrated via a different intermediate layer between the two layers.

Conclusively, the IPHC upheld the JPO’s decision on the correction.

Nevertheless, the IPHC furthermore reviewed inventive step on the granted Claims 3 and 4 before the corrections, and eventually acknowledged the inventive step of the granted Claims 3 and 4, and cancelled the JPO’s decision.

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

K&P’s Comments The above IPHC decision teaches that claims cancelled once during the prosecution are not allowed to be revived through a trial for correction after the grant since such correction is at risk for causing unforeseen disadvantage to a third party. One possible approach to provide against this kind of situation would be to precautionary file a divisional application and keep the application pending at least until the end of the opposition period.

(by Katsumasa OSAKI, Patent Attorney)

In March, 2019, the IPHC handed down 21 decisions including the above case on patent and utility model, and overturned the previous decisions in 4 cases.

In March, 2019, the IPHC handed down 7 decisions on trademark, and overturned the previous decision in 4 cases.

In March, 2019, the IPHC handed down no decisions on industrial design.