TOPICS

“Motorcycle Brake Control Apparatus and Behavior Analysis Apparatus”

Overview:
In an appeal of a suit for restitution of unjust enrichment, the court of first instance dismissed the plaintiff’s claims on the ground that the patented invention lacked the support requirement and that the patent would be invalidated in a patent invalidation trial, so the appellant (plaintiff) could not enforce the right. On appeal, the Intellectual Property High Court likewise dismissed the appeal, declining to accept the asserted “correction of a typographical error” regarding the specification and holding that the invention still violated the support requirement.
▶Summary of Judgment and Link to Full Text (Japanese)

Main Issue:
Whether it is permissible to correct the symbol “Ψ” denoting angular velocity, as described in the specification, to the symbol “Ψ̇” denoting angular acceleration (Patent Act Article 134bis(1), proviso item (ii): applicability of “correction of a typographical error or mistranslation”). [“Ψ̇” denotes “Ψ” with a dot above.]

Summary:
The appellant argued that, because the dimensions do not match in the equation “Ghosei=Gken-(Ψ·Rhsen)” as set out in the specification, the symbol “Ψ” is a typographical error for angular acceleration “Ψ̇” and the correction should be allowed. The court rejected the argument, holding essentially as follows:

Concerning post-grant corrections to the claims, specification or drawings, Article 126(1), proviso item (ii) of the Patent Act permits correction when the purpose is to correct a typographical error or a mistranslation. For something to be a ‘typographical error,’ it must be objectively clear from the specification, claims, or drawings attached to the application as a whole that the pre‑correction text is wrong and the post‑correction text is right, and a person skilled in the art would naturally notice this and understand the purport after correction. Article 134bis(1), proviso item (ii) is construed the same way.”

Therefore, even if one can recognize that a description in the specification and the like is objectively physically meaningless, that fact alone does not immediately make it a ‘typographical error’ under the said item. Unless it is a case in which it is natural to understand the purport after correction for such physically meaningless description, it should be construed as not being a ‘typographical error’ under the said item. In this regard, the appellant argues that, for the correction of a typographical error concerning the calculation formula recited in the claims, if interpreted literally, it becomes subtraction between physical quantities of different dimensions, rendering the technical meaning difficult to understand, and therefore the correction of a typographical error should be allowed. However, the mere fact that the technical meaning becomes difficult to understand does not mean that a correction of a typographical error should be allowed, and the appellant’s argument cannot be adopted.”

Comments:
This judgment addresses the interpretation of “correction of a typographical error” (Article 126(1), proviso item (ii), Article 134bis(1), proviso item (ii), and although not discussed in the judgment, Article 120quinquies(2), proviso item (ii), is to the same effect) among the permissible purposes for post-grant corrections to the claims and the like. It is notable in holding that it is not sufficient merely that the pre-correction description is clearly erroneous; rather, it must also be a case in which a person skilled in the art would naturally understand the purport after correction.

There are several decisions to the same effect (for example, IP High Court judgments of August 10, 2023, May 30, 2017, and October 18, 2006). This judgment suggests that there is a high hurdle to easily remedy post-grant deficiencies by means of “correction of a typographical error”, and is a useful reference for understanding the courts’ approach to post-grant corrections for “typographical errors”.

Yasuhiro SUTO