For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Friday, 29 June 2012

Japanese practice changes in relation to "sub-combination inventions"

During his time as a guest Kat, this particular Kat was hoping to cover developments from Japan, but his time is nearly running out, and so far the score is zero.  He has been saved at the last minute by an email from his friends at Ohtsuka Patent Office, with news of a revision of the Japanese Patent Examination Guidelines.  The revision of the Guidelines is recent, although the case that has occasioned it, referred to and attached in the note below, is from last year.

Liquid supplying system?
(See end of post)
The issue concerns claims to parts of inter-related apparatus, such as client-server, transmitter-receiver, printer-cartridge, and the like.  In the actual IP High Court decision, the whole apparatus is a "liquid ink supplying system", made up of the inter-related parts "recording apparatus" and "liquid ink container".

The Japanese nomenclature for this type of situation is to call a claim to the whole apparatus a "combination invention", and a claim to one of its parts only a "sub-combination invention".

Over now to Mr Ohtsuka:
We have attached a Special Feature article from the October 2011 issue of Patents & Licensing (P&L) regarding the IP High Court decision of Case No. 2010 (Gyo-ke) 10056.  This article was prepared in cooperation with Canon, for whom we managed the case. 

The IP High Court rendered a remarkable decision on a sub-combination invention relating to ink-cartridges by overturning the JPO’s Board of Appeal Trial Decision. The court decision prompted the JPO to announce a supplementary revision to the Current Patent Examination Guidelines in April 2012.  This revision stated that in the examination of patents of sub-combination inventions (like ink cartridges), the patentability of claims that include main body (other sub-combination) elements will be assessed and examined in the same way as normal patent claims.

The following three items are the key points of this Patent Examination Guideline revision: 
(1)  A claim cannot be deemed “unclear” for the sole reason that it includes a main body element. 
(2)  The patentability of the invention cannot be determined without considering the technical relationship to the main body. 
(3)  Even if a claim includes a main body element, if the claim itself is clear, patentability should be judged on the claim as-is. 

The reason we are writing to inform you of this IP High Court decision, and the resulting revisions to the JPO Patent Examination Guidelines, is that it is something of a landmark case. Its impact is not just limited to the case participants, but also has important implications for Japanese patent practice in general.
We hope that this information may be of interest to you, and perhaps help to contribute to the development of patent practice in your home nations.

The IPKat understands this as meaning that a claim to one part of the apparatus is permitted to refer to features of another part which is not claimed, without the claim being rejected as unclear for this reason.  If so, this appears to represent a more generous understanding than that adopted by the EPO, which is generally reluctant to allow claims to refer to features that are not within the claimed object. Will the other Trilateral Offices follow suit?

For an adorable animated version of the cute cat picture above, see here.

2 comments:

MaxDrei said...

As we all know, Japanese patent law came from the patent law of Germany. In German patent infringement law there is a long history on the question whether a "sub-combination" can be an infringement of a claim to a combination.

So I think the excitement in Japan is about the possibility of writing a claim to (say) a printer including an ink cartridge, getting it to issue, defending attacks on its validity, then getting a finding of "valid and infringed" imposed on a competitor that is competing in the aftermarket for ink cartridges.

Oder?

Darren Smyth said...

Dear MaxDrei, this may indeed be the reason for the interest in the topic, but the development as I understand it is in respect of how the sub-combination can be claimed as such.

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