TOPICS

“Moving-Image Encoder, Moving-Image Decoder”

Overview:

The Intellectual Property (IP) Hight Court upheld the decision by the Board of Examiners of the Japan Patent Office (JPO) in an opposition that revoked the patent on the grounds that, since the amendment to the correction request constitutes an alteration of the subject matter, the correction request does not meet the correction requirement, and the subject invention does not meet the support requirement.

Main Issue:

Whether the decisions by the Board of Examiners of the JPO were appropriate regarding whether:
i) the amendment to the correction request (hereinafter, the subject amendment) was appropriate;
ii) the correction request (prior to the above-mentioned amendment; hereinafter, the subject correction) was appropriate; and
iii) the support requirement was met.

Summary:

1. Whether the amendment to the correction request was appropriate

Prior to the subject amendment, correction 1 was directed to Element B1-2, and correction 2 was directed to elements A1-3 and C1-2, whereas each of corrections 1 and 2 after the subject amendment is directed to element B1. This fails to maintain an equivalence as a correction request, since the scope of matters for which the correction was requested before and after the amendment has changed. Accordingly, the subject amendment does not comply with the Patent Act, Article 120-5(9) and Article 131-2(1) as it alters the subject matter of the correction request.

2. Whether the correction request was appropriate

The “change flag”, the “threshold TH”, and the “maximum number of vectors” in the subject specification do not correspond to “control information to change the number of motion vector candidates”, and the specification and the like does not disclose any other information that would correspond to the above information. Therefore, “the control information to change the number of motion vector candidates selected based on the index information” is not a matter disclosed in the specification. Correction 2 does not fall within the scope of disclosure in the specification since it further limits the matters that are already undisclosed in the specification.

3. Whether the support requirement was met

Subject invention 1 includes Element A1-3, which is “…and the control information to change the number of motion vector candidates selected based on the index information” as an invention identifying feature. As already discussed in Item 2 above, “the control information to change the number of motion vector candidates” is not disclosed in the specification. Accordingly, it must be said that subject inventions 1 and 2 are not disclosed in the detailed description in the specification, and they do not comply with the support requirement.                                                                                                                                                                            

Comments:

In determining that a correction request of the patentee, filed in response to a Notice of Reasons for Revocation (the “Notice”) in opposition proceedings, violates the correction requirement, the Board of Examiners issues a Notice of Reasons for Refusal of Correction (Patent Act, Article 120-5 (6)). During the response period, the patentee is allowed to amend the request for correction and the appended correction to the claims (Article 17-5 of the same Act). However, what is allowed is limited to such modifications that do not change the subject matter of the correction request, such as cancelling corrected matters, and amending minor errors, as detailed in the Manual of Trial and Appeal Proceedings, 67-05.3, 4, (3)(ii). Accordingly, it would be challenging to remedy any correction request that violates the correction requirement. No correction request would be accepted without rectifying violations of correction requirement. When the Notice of Reasons for Revocation with an advance notice of appeal decision is issued, it is highly likely that the Board of Examiners actually ends up revoking the patent. We have a lot to learn from the present matter which seems to be a typical case with the above-mentioned background resulting in revocation of a patent.

This divisional application seems to have been filed with new matter introduced to the claims that is not supported in the original application, and patented and registered while maintaining the new matter. In this respect, in the first palace, it was most unlikely to overcome the support requirement violation by correction in this application. It is also worth noting that a patent containing new matter in the claims may not be remedied by correction.

Mitsuaki KOBIKI