TOPICS

“Game Machine”

Overview:

This case concerns a dispute over whether there was any procedural illegality in a trial decision that refused an amendment that was submitted at the same time as an appeal against a Final Rejection.

Given that the document (Cited Reference 1) cited in the Final Rejection teaches two different inventions of Cited Invention 1 and Cited Invention 2, the JPO dismissed the request for a trial by refusing the amendment that was submitted at the same time as the appeal against a Final Rejection (the amendment at issue) on the basis of Cited Invention 1, and stating that the invention (the invention of the subject application) prior to the amendment at issue (and also the invention subsequent to the refused amendment) should be rejected on the basis of Cited Invention 2.

The plaintiff (person requesting the trial) had asserted that a Notice of Reasons for Rejection based on the existence of Cited Invention 2 was issued during the examination, but no Notice of Reasons for Rejection based on the existence of Cited Invention 1 was issued until the trial decision, and since no opportunity was given to defend against the rejection based on the existence of Cited Invention 1, there had been a procedural violation of Article 159(2) and the main clause of Article 50 (Reason for Revocation 4).

▶Summary of Judgment and Link to Full Text (in Japanese)

Main Issue:

Whether there was a procedural violation in the trial request procedure (lack of Notice of Reasons for Rejection)

Summary:

With regard to the above issue, the court essentially ruled as follows and dismissed the plaintiff’s claim.

“Under the law, in cases such as amendment of this case at issue, where an amendment aimed at narrowing the scope of claims is made at the same time as submitting a request for a trial against the Final Rejection, there is no requirement to notify the applicant of reasons for rejection when refusing the amendment under Japan Patent Act Article 53(1) that is applied mutatis mutandis by Article 159(1) on the grounds that it violates Article 126(7) (the requirement for independent patentability), as applied in Article 17bis(6).

(See the proviso to Article 50, as applied mutatis mutandis by Article 159(2) of the Patent Act. Incidentally, according to the main clause of Article 50, if a reason for rejection different from that in the original decision is found in a trial against a Final Rejection, it is necessary to notify the applicant of reasons for rejection, but in this case, the reason for rejection of the invention of the subject application was the same as that in the Final Rejection, namely Cited Invention 2, and therefore, this does not fall under a situation where a new notice of reasons for rejection is required.)

The proviso to Article 50, as applied mutatis mutandis by Article 159(2), does not distinguish whether there is an obligation to notify of reasons for rejection according to whether the case falls under any of Articles 17bis(1)(i), (iii) or (iv), and in any case, the need to prevent delays in examination remains unchanged.

There is no statutory basis for interpreting that there is an obligation to notify of reasons for rejection only when an amendment filed at the same time as a request for a trial against a Final Rejection is to be refused on the grounds of a violation of the requirements for independent patentability.

Therefore, it cannot in principle be considered a violation of the Patent Act when refusing the present amendment on the grounds of a violation of the requirements for independent patentability, even though Cited Invention 1, which was not presented at the time of the Final Rejection, was used as the basis, and no notice of the reasons for rejection for this were given.”

Comments:

In a similar manner to the present judgment, 2003 (Gyo-Ke) No. 475 (Tokyo High Court, September 30, 2004) is an example of a judicial precedent that holds that there is no procedural defect in rejecting an amendment on grounds different from those of the Final Rejection, upon considering the requirements for independent patentability from among the requirements for amendment at the time of filing a request for a trial.

On the other hand, there are judicial precedents that have held that refusing an amendment for lack of independent patentability on grounds different from those of the Final Rejection, without establishing a substantive opportunity for defense, constitutes (or may constitute) a violation of due process. Examples include 2022 (Gyo-Ke) No. 10052 (Intellectual Property High Court, February 16, 2023), 2014 (Gyo-Ke) No. 10272 (Intellectual Property High Court, February 17, 2016), and 2010 (Gyo-Ke) No. 10298 (Intellectual Property High Court, October 4, 2011).

The present case is considered to be instructive in considering the relationship between the grounds for determining a violation of the requirements for independent patentability and the grounds for the Final Rejection, in cases where a violation of the requirements for independent patentability is the reason for refusing an amendment filed at the same time as a request for a trial.

Incidentally, the present judgment goes further and also holds that, since Cited Invention 1 and Cited Invention 2 are both based on the same Cited Reference 1, and share common elements, the reference was cited in the Notice of Reasons for Rejection, and the plaintiff (applicant/requesting party) was given ample opportunity to consider the details of the reference, and therefore, it does not constitute an “surprise attack” on the plaintiff. Even in light of the specific circumstances of this case, the court determined that there was no procedural violation.

Understandably, Cited Reference 1, which is a published unexamined patent application, contains a very large amount of information—with the detailed description of the invention extending to paragraph [5424] and the drawings up to Figure 471—therefore, to a certain degree the determination that the plaintiff was given ample opportunity to consider the details of the reference may be somewhat harsh on the plaintiff.

 Yasuhiro SUTO