2019.11.6 What's new » Article entitled Whether an Amendment Seeking to Add a Feature to the Claims that Was Not Described in the Specification Always Constitutes New Matter by Unius Managing Partner Toshiyuki Mitsuyoshi featured in the August 2019 issue of Intellectual Property Management published by the Japan Intellectual Property Association (JIPA)

Article entitled Whether an Amendment Seeking to Add a Feature to the Claims that Was Not Described in the Specification Always Constitutes New Matter by Unius Managing Partner Toshiyuki Mitsuyoshi featured in the August 2019 issue of Intellectual Property Management published by the Japan Intellectual Property Association (JIPA)

In an article entitled Whether an Amendment Seeking to Add a Feature to the Claims that Was Not Described in the Specification Always Constitutes New Matter by Unius Managing Partner Toshiyuki Mitsuyoshi, which was published in the August 2019 issue of the trade journal Intellectual Property Management by the Japan Intellectual Property Association (JIPA) as Article No. 496 in JIPA’s Case Law and IP Practice series, Patent Attorney Mitsuyoshi discusses hair dye manufacturer Hoyu’s win against the Japan Patent Office (JPO) in a 2018 decision by the Intellectual Property High Court (IPHC) which reversed the JPO Appeals Board’s prior determination that an amendment in which Hoyu sought to insert details regarding the dimensions of an agitator blade was new matter. In reaching this decision, the IPHC considered that there could be no new matter where the dimensions of the agitator blade in question, long commercially available as an accessory to an emulsification test apparatus, had never once been changed since first coming to market.

  • Article (in Japanese) by Unius Patent Attorney Toshiyuki Mitsuyoshi can be found at:
    http://www.unius-pa.com/wp/wp-content/uploads/8b4a4e82de9eb6731606541a8d347b5e.pdf
  • Details of the IPHC case finding for plaintiff Hoyu are as follows:
  • An earlier precedential case which is discussed in Patent Attorney Mitsuyoshi’s article and which addresses the question of whether an amendment that seeks to add a negative limitation with the goal of excluding certain compounds from the scope of the claims constitutes new matter is:
    • “Photosensitive Thermosetting Resin Composition and Method of Forming Solder Resist Pattern by Use Thereof” case
    • Tamura Kaken Corporation v. Taiyo Ink Mfg. Co., Ltd.
    • Intellectual Property High Court Case No. 2006(Gyo-Ke)10563
    • Decided 30 May 2008
    • Japanese original of the IPHC case upholding the validity of defendant Taiyo’s Japanese Patent No. 2133267 in this attempted invalidation proceeding brought by plaintiff Tamura can be found at: http://www.ip.courts.go.jp/app/files/hanrei_jp/405/036405_hanrei.pdf
    • English translation of the IPHC case upholding the validity of defendant Taiyo’s Japanese Patent No. 2133267 in this attempted invalidation proceeding brought by plaintiff Tamura can be found at: http://www.ip.courts.go.jp/app/files/hanrei_en/064/000064.pdf
  • Profile (in English) of Unius Managing Partner and Patent Attorney Toshiyuki Mitsuyoshi can be found here: Toshiyuki MITSUYOSHI.
  • Those interested in learning more may wish to inquire with Unius via email to office@unius-pa.com or fax to +81 (0)6 6838 0515.