“Mechanical Parking Lot Apparatus, Method of Controlling the Mechanical Parking Lot Apparatus, and Method of Providing Safety Verifying Function for the Mechanical Parking Lot Apparatus”
In a prior opposition procedure, the Board of Trial Examiners of the Japanese Patent Office (JPO) rejected a request for a correction of a patent on the grounds of added matter, and thereby held the patent invalid. In this decision, the Intellectual Property High Court (IP High Court) overturns the JPO decision.
Whether the JPO erred in determining that the corrections for this case involved an addition of new matter.
Summary of Conclusions:
According to the IP High Court, studying the specification, claims and drawings of the patent reveal that Examples 1, 2 and 4, which relate to cases in which a verifier visually performs safety verification of a mechanical parking lot apparatus, disclose that a means of inputting completed safety verification is provided inside a platform room of the apparatus, while only Example 3, in which the verifier performs safety verification using a camera and a monitor, discloses that a plurality of means of inputting completed safety verification may be provided inside and outside the platform room, without describing a configuration whereby safety verification is visually performed outside the platform room (according to the corrected claim 1). The court nevertheless considers that these are merely disclosed examples, and that typically it cannot be said that the configuration of the invention is limited to the examples disclosed. The court further observed that an examination of the overall specification for this case did not reveal any disclosures that could limit the claim interpretation to the configurations disclosed in Examples 1 to 4.
Furthermore, the court reasons that the patent’s objective/significance of performing safety verification with more certainty would be achieved as long as the safety verification position and the means of inputting completed safety verification are located where safety in the platform room and the like can be verified. Although the defendant asserts that such an interpretation would apply an unfairly broad interpretation of the specification for this case, the court concludes that such an interpretation could be given when taking into consideration the specification as a whole.
It can be said that the request for correction of claim 1 covers not only a configuration that is explicitly disclosed in the specification, but also a configuration that is not explicitly disclosed (e.g., the configuration whereby safety verification is visually performed outside the platform room), such that it attempts to add a so-called intermediate concept into the claim. Accordingly, cases such as this one, which pertain to a field in which an effect can be inferred from the configuration, can be viewed as including the possibility of expanding the claim scope, when taking into consideration the specification as a whole, to include an intermediate concept not explicitly disclosed.