The Japan Supreme Court handed down the first decision concerning standards to be used in recognizing the gist of a claimed invention in the landmark March 1991 case involving the Japanese Patent Office (JPO) and the German company Boehringer-Mannheim.
In general, the gist of an invention is understood to be expressed in a claim, which is the basis for determining patentability such as an inventive step or novelty.
The JPO examination guideline concerning how to interpret a claimed invention states that "an invention for which a patent is sought should be construed on the basis of the technical content recited in a claim. In the interpretation of such technical content, the description and drawings are taken into consideration" .
Although heretofore there were arguments concerning whether the technical content presented in claims should be interpreted inherently considering the description and drawings, the 1991 Supreme Court decision ended these arguments.
The case that went before the Supreme Court concerned a claim directed to a method used for measuring triglycerides using lipase. The Tokyo High Court (THC) had held that lipase recited in the claims should be recognized as Ra lipase because only Ra lipase was technically supported in the description and working examples, and hence the claimed method invention had an inventive step and thus was allowable. The JPO subsequently appealed the THC decision to the Supreme Court.
The Court in reversing the decision by the THC held that the gist of an invention should be recognized on the basis of the description of claims unless special circumstances are present. Special circumstances were defined for example as a case where the meaning of a technical term set forth in the claims is not clear enough to be limited to a single meaning, or reference to it is apparently incorrect in light of its description.
That is, the wording "on the basis of the description of claims" therein means "literally in accordance with the description of claims" . In other words, the Supreme Court held that only when and if special circumstances are present is it permissible to take the description into account.
It should be noted,though, that this decision only indicates the principle of elucidating claims and does not prohibit the consideration of the description when interpreting claims.
Ikuo Fujino
