Date of
Judgment: July 17, 1992
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial (Administrative)
Subject
Matter: Patent (Inventions)
Main
text of the judgment (decision):
1.
The jokoku appeal shall be dismissed
2. The jokoku appellant
shall owe the cost of the jokoku appeal.
Reasons:
Concerning
the ground of the jokoku appeal by the representative of the jokoku appellant,
MIZUTA Koichi, HANABUSA Masami, HANABUSA Tsuneo, NARITA Keiichi and NAKAMURA
Toshio:
According
to the summary of the facts duly settled by the original instance, the judgment
of the lawsuit for revocation of a patent office decision on the appeal for
invalidation revoked the patent office decision on the ground that the patent
office decision became erroneous, since the decision was directed towards the
invention set forth in item 1 of the scope of the patent claim in the
specification before amendment, while the patent office decision on amendment,
which was intended to reduce the scope of claims pertaining to the patent,
became final while the case was pending. The judgment further determined that
there were no grounds for claims of invalidity of the invention set forth in
item 1 of the amended scope of the patent claim in the specification and added
this determination in the ground of revocation. In light of this judgment, the
effect of the judgment for revocation is limited solely to the reason that the
patent office decision was erroneously directed towards the invention before
amendment. The subsequent patent office decision with regard to the appeal for
invalidation was directed to the invention after amendment according to the
effect of the above judgment and decided that there are no grounds for claims
of invalidity of the invention set forth in item 1 of the scope of the patent
claim after amendment. However, we consider that this subsequent patent office
decision was not decided according to the effect of the above judgment.
Accordingly, we deem the ruling of the original instance court to be unlawful
in the interpretation and application of law concerning the effect of the prior
judgment.
However,
the mentioned unlawfulness does not affect the conclusion of the judgment of
the original instance court because the original instance court determined that
the description in specification after amendment fulfilled the requirement of
Article 36 (4) and (5) (the law before revision in accordance with Law No. 41
of 1985). That is, the original instance court determined that the decision by
the patent office, that there is no ground for the invalidation of the patent
set forth in item 1 of the scope of the patent claim, can be approved. This
determination is approved judging from the - 2 - evidence listed by the
original instance court.
For
the reason above-mentioned, we can not find any grounds in the assertion of
jokoku appeal which argued that the judgment for revocation of decision with
respect to the appeal for invalidation has no binding effect. Accordingly, we
cannot adopt the assertion of the jokoku appeal.
In
the end, the judgment was rendered in the form of the main text by the
unanimous consent of the Justices in accordance with Article 7 of the
Administrative Case Procedure Law and Article 401, 95 and 89 of the Code of
Civil Procedure.
(This translation is provisional and
subject to revision.)