TOPICS

“System, Method, and Apparatus for Electronic Patient Care”

Overview:

This case concerns an appeal against a final rejection, in which the appeal decision concluding that “the request for this appeal is without merit” was revoked.

► Link to a summary and full text of the trial decision (Japanese)

Main Issue:

Whether the claims of the specification of this case satisfy the clarity requirements. 

Summary:

The appeal decision concluded that the present application does not satisfy the requirements set forth in Patent Act Article 36(6)(ii) regarding the description of the claims, on the grounds that the technical meaning of the term “web service” in the present invention is unclear.

The court held that, in determining whether the invention for which a patent is sought is clear, not only the wordings of the claims but also the description in the specification and the drawings attached to the application must be considered, and that such determination should be made from the perspective of whether the claims are so unclear as to cause unforeseeable disadvantages to third parties, based on the common technical knowledge at the time of filing possessed by a person skilled in the art in the technical field to which the invention pertains. According to the descriptions in the publications, the term “web service” is used to refer to “a technology that enables cooperation between multiple web application systems distributed over the Internet, and conforms to the specifications of XML, UDDI, WSDL, and SOAP.” It was recognized that this was common technical knowledge at the time of the international filing date of the present application. Therefore, in light of such common technical knowledge at the time of filing, the terms “web service” and “transaction-based web service” as used in the inventions of the present application can be understood as referring to the above-mentioned meaning. As such, even if the specification of the present application does not provide a detailed explanation of these terms, the claims cannot be regarded as being so unclear as to cause unforeseeable disadvantages to third parties. Accordingly, the court revoked the decision.

Comments:

The defendant argued that, since the specification of the present application contains no specific explanation of terms such as “web service,” merely referring to documents that are not clearly related to the application cannot render the technical meaning of such terms clear. The defendant further contended that, even if one attempts to understand the technical meaning of the terms in light of the common technical knowledge at the time of filing, the specification of the present application offers no clue whatsoever in this regard, and it would consequently become possible to freely change the technical meaning of the terms by submitting evidence unrelated to the present application. However, the court rejected the defendant’s arguments, holding that the clarity requirement must be assessed based on the common technical knowledge possessed by a person skilled in the art at the time of filing and that, since the meaning of the term “web service” as well as the term “transaction” itself in connection with web service was recognized as common technical knowledge, the lack of specific explanations in the specification does not render the technical meaning of “web service” unclear.

Hiroshi ABE