Date of Judgment: March 8, 1991
Issuing Authority: Supreme Court
Level of the Issuing
Authority: Final Instance
Type of Procedure: Judicial (Administrative)
Subject Matter: Patent(Invention)
Main text of the
judgment (decision):
1. The judgment
of the original instance court shall be quashed.
2. The case
shall be reversed to Tokyo High Court.
Reasons:
On the ground
for appeal item 1 by the representatives for the jokoku appeal, Nobuo Kikuchi,
Takashi Oshima, Seijiro Shimada, Jyoji Iwamatsu, Koji Obana, Akira Yonekura,
Koishiro Izawa and Yoshihiko Funaoka:
1. According
to the facts ascertained by the original instance court, (1) the adjudication
by the Patent Office on the decision to reject the patent application by the
jokoku appellee determined the summary of the invention under the patent
application in accordance with the entry in the scope of the patent application
extracted from the specifications of the patent application, denied the
inventive step of the invention under application on the basis of the
inventions entered in the first to the sixth quoted cases and ruled that the
claim for adjudication did not stand, (2) the Patent Office ruled that for the
detailed explanation of the invention in the specification of the patent
application in the present case, items (1) to (10) of the excerpt of the
specification are available.
2. The
original instance court, based upon the above facts, ruled as follows and
quashed the adjudication of the Patent Office on the ground that the
adjudication had erred in the interpretation of the basic constituent elements
of the invention under patent application, and as a result, unlawfully denied
the inventive step of the invention, and that this error evidently affected the
conclusion of the adjudication.
1) The method
as indicated in the above mentioned (4) in the detailed description of the
invention in the specification of the application is a method of measuring the
glycerine which is isolated by the enzymatic saponification of the triglyceride
by lipase (hereinafter, 'Ra-lipase') from Rhizopus arrihizus (the same as
Rhizopus arritus). This is in fact the same in substance as the composition of
the invention applied for patent by the jokoku appellee under patent
application No.130788 of 1970 concerning the method of measuring triglyceride
by using Ra-lipase, i.e. 'the method of the quantitative measurement of
triglyceride whose characteristic is the dissolution of neutral fat which does
not contain lipoprotein or protein by lipase which is obtained by Rhizopus
arrihizus when detecting triglyceride and/or neutral fat without protein which
exist in combination with the lipoprotein in fluid, particularly body fluid, in
a totally enzymatic and quantitative manner and the quantitative measurement of
glycerine which is obtained as a decomposition product by means which are
themselves publicly known'. According to the entry of the detailed description
of the invention in the specification in the patent application, the invention
under application in the present case is intended to improve the method of
measurement as indicated in item (4). This presupposes the use of Ra-lipase.
2) According
to item (4) of the specification, the inventor of the present invention under
patent application is of the view that lipase other than Ra-lipase is incapable
of fully decomposing triglyceride within the permissible time, and is
unsuitable for the measuring of triglyceride by isolated glycerine. Therefore, the
inventor would not have used the term 'lipase' in the basic composition of the
scope of the patent claim for the present invention to include the above lipase
which is unsuitable for measuring triglyceride.
3) Thus, the
term 'lipase' as indicated in the detailed explanation in the specification of
the patent application in the present case means Ra-lipase.
4) If this is
the case, the method which is technologically substantiated as an improvement
of the method of measurement as indicated in the above-mentioned item (4) is
only the method which sues [uses] Ra-lipase. The tested cases as indicated in
the specification of the patent application cover only those which used
Ra-lipase.
5) Therefore,
the term 'lipase' as indicated in the basic composition in the scope of patent
claim for the present invention means Ra-lipase, although there is no
limitation in the wording.
3. However,
the above ruling of the original instance court is not justifiable. The reasons
are as follows:
When
examining whether the requirement for the patent as provided by Article 29,
paragraphs 1 and 2 of the Patent Law, i.e. the novelty and inventive step of
the invention, as prerequisites to compare this invention with the inventions
indicated in the subparagraphs of the same provision, paragraph 1, the summary
of the invention for which patent application has been made. This determination
must be made on the basis of the entry in the scope of the patent claim as
indicated in the specifications attached to the patent application, unless there
are special circumstances. Only in cases such as where the technological
meaning of the entry of the scope of the patent claim cannot be understood
clearly and unequivocally, or where, in the light of the entry of the detailed
description of the invention, there is an obvious error in the entry of the
scope of the patent claim, can the entry in the detailed explanation in the
specification be taken into account. This is evident from Article 36, paragraph
5, subparagraph 2 of the Patent Law (concerning the present patent application,
the Patent Law before the amendment by Law No.46 of 1975), which provides that
in the scope of the patent claim, only matters which are essential to the
composition of the invention under patent application shall be entered.
In the
present case, according to the above facts ascertained by the original instance
court, in the entry of the patent claim concerning the present invention, there
is no indication that the lipase which is used for the enzymatic saponification
of triglyceride is limited to Ra-lipase. Nor are there special circumstances as
mentioned above. Therefore, the lipase as indicated in scope of the patent
claim of the present invention cannot be understood to be limited to Ra-lipase.
The original instance court ruled that the present invention under application
is intended to be an improvement of the method of measurement as indicated in
item (4) above, but the method which is technologically substantiated as an
improvement is only the method which uses Ra-lipase, and that the tested cases
as indicated in the specification of the patent application cover only those
which used Ra-lipase. However, since, in the technological area of the method
of measurement related to the present invention, it cannot be said that it is
common technological knowledge amongst those in the business that lipase other
than Ra-lipase cannot possibly be used, it cannot be deduced that the method
which is technologically substantiated as an improvement is only the method
which uses Ra-lipase or that that the tested cases as indicated in the
specification of the patent application cover only those which used Ra-lipase,
and that therefore, the lipase as indicated in the scope of the patent claim
only means Ra-lipase.
4. If this is
the case, the ruling of the original instance court, which, based upon the
facts ascertained by the original instance court, concluded that the lipase
which is indicated in the scope of the patent claim for the present invention
means Ra-lipase, and the enzyme which is adopted by the present invention is
only Ra-lipase, erred in the interpretation and application of the law
concerning the determination of the summary of the invention which is a
prerequisite to the examination of the existence of the progressiveness in
patent application, and it is evident that this breach of law affects the
conclusion of the original instance court. The argument which raises this point
is with grounds and without considering other grounds of appeal, the judgment
of the original instance court cannot but be quashed.
Therefore, in
order to examine the case further, the case shall be reversed to the original
instance court. In accordance with Article 7 of the Law on Administrative
Litigation and Article 407, paragraph 1 of the Code of Civil Procedure, the
justices unanimously rule as the main text of the judgment.
(Translated by Sir Ernest Satow Chair
of Japanese Law, University of London)