Novelty and Inventive Step (Draft) (Provisional Translation)

Transcription

1 Novelty and Inventive Step (Draft) (Provisional Translation) Examination Guidelines for Patent and Utility Model Part II: REQUIREMENTS FOR PATENTABILITY Chapter 2: Novelty and Inventive Step Method of Construing Particular Types of Claim Statements... 1 (omitted) (1) Claim statements defining a product by its work, function, property or characteristic, etc. (hereinafter referred to as "function or characteristic, etc.")... 1 (2) Claim statements defining a product by its use (limitation by use)... 3 (omitted)

2 1.5.2 Method of Construing Particular Types of Claim Statements (1) Claim statements defining a product by its work, function, property or characteristic, etc. (hereinafter referred to as "function or characteristic, etc.") Where a claim includes a statement defining a product in terms of its function or characteristic, etc., such a claim statement should, in principle, be construed as defining a every product which has such function or characteristic, etc., except when it should be construed otherwise in compliance with the principle mentioned in 1.5.1(2) above. (Note) For example, "a building wall material incorporating a layer which insulates heat" should be construed as a building wall material incorporating "a product" that is "a layer which is capable of performing a work or function of heat-insulation." (Note) For example, while a claim statement reads as "heat-resistant alloy consisting of," the examiner should handle the statement according to the (2) mentioned below if the term "heat-resistant alloy" should be construed as "an alloy which is to be used for heat-resistance purpose" in the light of the description in the specification, the drawings and the common general knowledge as of the filing. However, in the cases where the function, characteristic, etc. are inherent in the product, such statements cannot serve as definition of the product and should be construed as the product per se. Example 1: "Chemical compound X having anti-cancer effect" In example 1, if the anti-cancer effect is a characteristic which is inherent in the chemical compound X, the statement of "having anti-cancer effect" cannot serve as definition of the product, and "Chemical compound X having anti-cancer effect" eventually means "chemical compound X" per se, regardless of whether it has been known to the public that the chemical compound X has the anti-cancer effect. If the chemical compound X has already been known to the public, thus, the claimed invention is not novel. (In the case of "an anti-cancer medicament comprising chemical compound X," the claimed invention should be identified according to (2) below.) Example 2: "RC-integration circuit which cuts higher frequency signals and passes lower frequency signals" In example 2, the function which "cuts higher frequency signals and passes lower frequency signals" is inherent in an "RC-integration circuit." Therefore, this statement means an "RC-integration circuit" in general. It should be noted, as opposed to this, that in the case of a claim statement reading as 1

3 "RC-integration circuit which cuts higher frequency signals of more than F1 Hz and passes lower frequency signals of less than F2 Hz," the limitation are not defined by the function which an "RC-integration circuit" in general has inherently. Rather, the claim statement means "a particular RC-integration circuit with a particular frequency characteristic, and not a RC-integration circuit in general." Such limitation serves for definition of a product. In the light of the common general knowledge as of the filing, however, claim statements defining a product in terms of its function or characteristic, etc. should not be automatically construed as a specific product in every product which have the function or characteristic, etc. For example, in a claim statement reading as "means for fixing the first wooden member to the second plastic member," it is clear that "means for fixing" does not mean any means used for fixing a metal to another metal such as welding. 2

4 (2) Claim statements defining a product by its use (limitation by use) Regarding limitation by use Where a claim includes a statement such as a product for the use of defining a product by its use (limitation by use), such a statement should be construed what the limitation by use means as a matter to define the claimed invention in the light of the description in the specification, the drawings and the common general knowledge as of the filing. (Note that it can be a violation of Section 36(6)(ii) if the statement cannot be construed as matters to define the claimed invention.) In this regard, however, concerning a chemical compound with a limitation by use such as for the use of (e.g., a chemical compound Z for the use of Y), in general, this limitation by use solely indicates the usefulness of the chemical compound, and therefore the chemical compound is construed as one without the limitation by use (e.g.; a chemical compound Z). (Tokyo High Court Judgment Hei (Heisei 7 (Gyo Ke) 27). This point of view also applies to microorganism as well as chemical compounds. Example 1: A chemical compound Z for insecticide In the light of description in the specification, the drawings and the common general knowledge as of the filling, the statement for insecticide solely indicates the usefulness of the compound, therefore a chemical compound Z for insecticide is construed as a compound Z itself, without the limitation of use. Accordingly, in this case, a chemical compound Z for insecticide cannot be determined to be different from a publicly known compound Z, without the limitation by use. General point of view on a product with a limitation by use Where a product with a limitation by use is construed as the one particularly suitable for its use just like the case where a product can be construed as one that has shape, structure, composition etc., (hereinafter referred to as structure etc. ) particularly suitable for its use, in the light of the description in the specification, the drawings and the common general knowledge as of the filing, the product is construed as a specific product with the structure etc. limited by its use. Therefore, in this case, even if matters defining the claimed invention and matters defining the cited invention do not differ in the statements other than the limitation by use, these inventions are construed to be different in the case 3

5 where the structure etc. based on the limitation by use is different. Example 2: a hook for crane which is shaped like Where a statement reading as a hook for crane which is shaped like is construed as a matter defining a hook in size and strength which are particularly suitable for crane in the light of the description in the specification, the drawings and the common general knowledge as of the filing, the claimed invention is construed as a hook consisting of such a structure. Therefore, since a hook for crane which is shaped like is different in structure from a hook for fishing (fishhook) having a similar shape, the former is different from the latter. Example 3: Iron-base alloy for a piano wire with a composition A Where a claim statement reading as for a piano wire with a composition A is construed as a matter defining the Iron-base alloy, consisting of a fine lamellar microstructure to give a high tensile strength which is particularly suitable for a piano wire in the light of the description in the specification, the drawings and the common general knowledge as of the filing, the claimed invention is construed as an Iron-base alloy consisting of the fine lamellar microstructure. Therefore, since iron-base alloy for a piano wire with a composition A is different in microstructure from iron-base alloy without the fine lamellar microstructure (e.g., iron-base alloy for a gear with a composition A ), the former is different from the latter. On the other hand, where a product with a limitation by use cannot be construed as a product which is particularly suitable for its use, in the light of the description in the specification, the drawings and the common general knowledge as of the filing, the limitation by use is not construed as a matter for defining the product, except for the cases that fall under 3) mentioned below. Therefore, in this case, when matters defining the claimed invention and matters to define cited invention do not differ in the statements other than the limitation by use, these inventions are not construed to be different inventions. Method of handling a use invention In general, a use invention is construed as an invention based on a discovery of unknown attributes of a product and its suitability for a new use due to these attributes. Case law for reference; Tokyo High Court Judgment Hei (Heisei 10 (Gyo Ke) 401), Tokyo District Court Judgment Hei (Heisei 2 (Wa) 4

6 12094), Tokyo High Court Judgment Hei (Heisei 10 (Gyo Ke) 308), Tokyo High Court Judgment Hei (Heisei 10 (Gyo Ke) 364) In this view, where a claimed invention includes a statement with a limitation by use, and the claimed invention is construed as the one based on a discovery of unknown attributes of a product, and its suitability for a new use due to these attributes, it is appropriate to construe the claimed invention, from the view points including the limitation by use, as the one in which the limitation by use has a meaning for identifying the claimed invention. Therefore, in the case of mentioned above, even if the product itself has already been publicly known, the claimed invention can have a novelty as a use invention. For a use invention in the medicinal or pharmaceutical field, refer to Part VII, Chapter 3, Medicinal Inventions. Example 4: A composition for an antifouling coating applied to ship bottom comprising a specific quaternary ammonium salt. In a composition for an electro-deposition primer comprising a specific quaternary ammonium salt and in a composition for an antifouling coating applied to ship bottom comprising a specific quaternary ammonium salt, even if the both compositions cannot be distinguished other than in term of their limitation of use, the use for an electro-deposition primer is based on an attribute that the composition forms an electro-deposition coating layer on the basis and improves an adhesiveness with an overcoat layer, and the use of for an antifouling coating applied to ship bottom is based on a discovery of an unknown attribute that the composition can prevent shellfish s adhesion to ship bottom, and is a new use based on the unknown attribute and different from the known range of use, and, in this case, the limitation of use has a meaning to define a composition. Therefore, the both inventions are different. In this regard, however, even if unknown attributes are found, a novelty of the claimed invention is denied unless the product offers a new use as a use of product. In addition, even if a claimed invention and a cited invention are different in terms of the wording of the limitation of use, in case the means to apply, the place to apply, the range to apply, and period to apply, etc. of both inventions are not different, and in case their uses are not substantially different, the novelty of the claimed invention is denied. Example 5: A yogurt containing an ingredient A for an atopic dermatitis symptomatic improvement. Even if the a yogurt containing an ingredient A for an atopic dermatitis symptomatic improvement is an invention based on its unknown attribute of suppressing an overreaction of internal immune responses, in case a yogurt 5

7 containing an ingredient A has been generally used as a common food, as long as there is not any special condition that, for example, a yogurt containing an ingredient A can not always have been eaten by a person expecting an atopic dermatitis symptomatic improvement, it can not be construed that the range to apply a yogurt containing an ingredient A for an atopic dermatitis symptomatic improvement is beyond the known range and it can not be said that it offers a new use. Therefore, the novelty of a yogurt containing an ingredient A for an atopic dermatitis symptomatic improvement is denied by a yogurt containing an ingredient A. Example 6: A cosmetic product containing an effective ingredient A for the prevention of skin wrinkles. In case a cosmetic product containing an effective ingredient A for moisturizing skin is the invention based on its attribute of skin conditioning of softening the horny layers and increasing water absorption to the skin, on the other hand, a cosmetic product containing an effective ingredient A for preventing the skin wrinkles is an invention based on its unknown attribute of improving the skin surface by accelerating the production of substance X in the body, and thus, the both inventions are different in terms of the wording of the limitation of use. However if the both products are applied to skin externally as a skin-care cosmetic product, and if it is a common general knowledge in this field that a cosmetic product having a moisturizing effect is generally used by a person expecting an improvement of the skin wrinkles because of keeping the skin condition well by moisturizing and by improving the skin wrinkles, the range of the applications of both inventions can not be distinguished substantially, that is, it can not be considered that the use of the former invention is distinguished substantially from the latter. Therefore, as long as there is no difference between both inventions other than the limitation of use, the novelty of the latter invention is denied by the former invention. (Note 1) In general, when an invention was found to have creativity in a use for the specified purpose which had been unknown as the use of that product, based on a discovery of unknown attributes of the product, it is determined to have a novelty as a use invention. And this idea of a use invention is applied to the technical field where it is relatively difficult to understand how to use a product from its product structure or name in general (e.g., a technical field of compositions including a chemical substance). At the same time, the method of handling a use invention is not applied usually to machines, apparatuses, goods, equipment, etc., since these products are taken for granted to be integrated with their uses. (Note 2) Even if a claimed invention is construed as supplying a new use 6

8 (omitted) based on an attribute of the product, in case the person skilled in the art can easily arrive at the use based on the known attributes or the structure, etc. of the product, an inventive step of the claimed invention is denied (Tokyo High Court Judgment Hei (Heisei 14 (Gyo Ke) 376)). (Note 3) When a use invention is observed in terms of descriptive expression, there are one with limitation by use, one with limitation by medicaments, one with limitation by method of using, and so on. The handling mentioned above is also applicable to use inventions other than those with limitation by use. In the light of (4), however, it should be applicable only if there are terms or languages, which mean use in the claim. (For example, a catalysis consisting of,, ornamental material consisting of alloy, a method of killing insects by using, etc.) 7