{"id":3045,"date":"2025-07-29T16:26:51","date_gmt":"2025-07-29T07:26:51","guid":{"rendered":"https:\/\/www.sakae-pat.jp\/?page_id=3045"},"modified":"2025-07-29T18:01:07","modified_gmt":"2025-07-29T09:01:07","slug":"treatise02","status":"publish","type":"page","link":"https:\/\/www.sakae-pat.jp\/en\/treatise\/treatise02\/","title":{"rendered":"treatise02"},"content":{"rendered":"\n<div class=\"wp-block-columns title-box is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column js-box is-layout-flow wp-block-column-is-layout-flow\">\n<p class=\"second-title\"><\/p>\n\n\n\n<h2 class=\"wp-block-heading\">Publication<\/h2>\n<\/div>\n<\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<p><br>Patent Attorney Toshiaki Eto would like to introduce some of his papers related to the \u201cessence of invention\u201d that he has written to date.<br><\/p>\n\n\n\n<h3 class=\"wp-block-heading\">A four-part series on the essence of invention<\/h3>\n\n\n\n<ul class=\"reportlist\">\n<li><a href=\"https:\/\/www.sakae-pat.jp\/en\/treatise\/\">Part 1 (1999)<br>The Application of the Doctrine of Equivalents to Functional Claims<\/a><\/li>\n<li class=\"now\"><a href=\"https:\/\/www.sakae-pat.jp\/en\/treatise\/treatise02\/\">Part 2 (2006)<br>The First Requirement (Essential Element) for the Application of the Doctrine of Equivalence<\/a><\/li>\n<li><a href=\"https:\/\/www.sakae-pat.jp\/en\/treatise\/treatise03\/\">Part 3 (2004)<br>What is the best claim? The boundary between ambiguous claims<\/a><\/li>\n<li><a href=\"https:\/\/www.sakae-pat.jp\/en\/treatise\/treatise04\/\">Part 4 (2006)<br>How to Describe Patent Claims, Contribution Rate, and Damages<\/a><\/li>\n<\/ul>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:100px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<p>&lt;This is a machine translation of a Japanese paper.&gt;<\/p>\n\n\n\n<p>Part 2 (2006)<\/p>\n\n\n\n<h2 class=\"wp-block-heading bottom0 has-small-font-size\"><strong>The First Requirement (Essential Element) for the Application of the Doctrine of Equivalence<\/strong><\/h2>\n\n\n\n<p class=\"bottom0\"><\/p>\n\n\n\n<p class=\"has-text-align-right\">Japan Patent Attorneys Association Central Intellectual Property Research Institute,<br> Research Report No. 11, Heisei 14 (2002)<br>Patent Attorney Toshiaki Eto<\/p>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h4 class=\"wp-block-heading\">1. The Meaning of the Essential Part<\/h4>\n\n\n\n<h5 class=\"wp-block-heading\">1-1. Introduction<\/h5>\n\n\n\n<p>In the Supreme Court decision in the \u201cInfinite Motion Ball Spline Bearing Case\u201d (February 24, 1998), which is said to have affirmed the doctrine of equivalence as a general legal principle, the first requirement for the application of the doctrine of equivalence was stated as \u201cthe different parts must not be essential parts.\u201d<\/p>\n\n\n\n<p>In determining this first requirement, it is necessary to identify the essential parts of the patented invention. Indeed, the identification of these essential parts is arguably the most critical factor in defining the scope of patent rights (including equivalents). After all, the issue at hand is whether a product or the like incorporates the essential parts of the patented invention, thereby falling within the scope of the technical scope of the patent.<\/p>\n\n\n\n<p>In other words, under the patent law&#8217;s conditions for protecting inventions\u2014which involve conducting a patentability examination on inventions described in the claims as the subject matter for which rights are sought and disclosed in the specification, and granting exclusive rights to protect them\u2014extending the effect of the patent right to objects or methods that do not incorporate the essential elements of the patented invention would contradict the purpose of the patent law.<\/p>\n\n\n\n<p>In the following, we will examine the important matters concerning the determination of the scope of rights, namely, the \u201cessential elements\u201d that should be based on what factors and under what principles.<\/p>\n\n\n\n<p class=\"has-white-background-color has-text-color has-background has-small-font-size\" style=\"color:#666666\">1) Supreme Court Case Law Commentary, \u201cLegal Times, Vol. 53, No. 6,\u201d by Ry\u014dichi Mimura, p. 172 <br>2) \u201cCase of Ball Spline Bearing for Infinite Motion (Supreme Court Decision of February 24, 1998, Supreme Court Case No. Hei 6 (O) 1083)\u201d<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">1-2. Definitions in lower court rulings<\/h5>\n\n\n\n<p>Following the aforementioned Supreme Court ruling, when the issue of equivalence arose in lower courts, the first requirement mentioned above\u2014that the portions of the claimed invention that differ from the product or the like described in the claims are not essential elements of the patented invention\u2014was examined, and the definition was established as follows:<\/p>\n\n\n\n<p>\u201cThe essential elements of the patented invention are the features of the claimed invention that constitute the unique problem-solving means of the patented invention.\u201d<\/p>\n\n\n\n<p>\u201cThe characteristic parts of the configuration of the patented invention described in the claims that form the basis for the unique problem-solving means of the patented invention\u201d (Tokyo District Court, March 23, 2012)3)<\/p>\n\n\n\n<p>\u201cThe parts of the configuration of the patented invention described in the claims that produce the unique effects of the patented invention\u201d (Osaka District Court, May 27, 1999)4) (Osaka High Court also adopted the same definition)5)<\/p>\n\n\n\n<p>\u3000<\/p>\n\n\n\n<p>Furthermore, the common definition in the above judgments is that \u201cin other words, it refers to the part that, if replaced by other configurations, would be evaluated as a separate entity from the technical concept of the patent invention as a whole.\u201d<\/p>\n\n\n\n<p>The common definition provided in the above judgments clarifies the universal meaning of \u201cessential part.\u201d That is, the \u201cessential part\u201d refers to the important elements of a patent invention that, when compared with the technical concept of the patent invention and the subject product, would render the subject product incapable of being an infringing product if it did not utilize that \u201cpart\u201d (technical concept).<\/p>\n\n\n\n<p>Although the term \u201cessential part\u201d is used, this does not necessarily mean a part of the elements of the patented invention. An essential part must be the technical idea that constitutes the patented invention as such, and it must be a technical idea that can solve the problems of the prior art on its own.While it constitutes the core of the technical concept described in the claims, it does not refer solely to the parts that differ from prior art.<\/p>\n\n\n\n<p>In other words, the essential part may be defined as encompassing all the elements of the invention described in the claims (when the description in the claims aligns with the core of the patented invention), or it may refer to the core technical concept of the invention extracted by excluding certain parts from the configuration described in the claims.<\/p>\n\n\n\n<p>The \u201cessential part\u201d is difficult to grasp through general or abstract consideration, and it is necessary to first examine it using specific examples.<\/p>\n\n\n\n<div class=\"wp-block-group\"><div class=\"wp-block-group__inner-container is-layout-constrained wp-block-group-is-layout-constrained\">\n<div class=\"wp-block-group is-vertical is-layout-flex wp-container-core-group-is-layout-8cf370e7 wp-block-group-is-layout-flex\">\n<div class=\"wp-block-group\"><div class=\"wp-block-group__inner-container is-layout-constrained wp-block-group-is-layout-constrained\">\n<p class=\"has-white-background-color has-text-color has-background has-small-font-size\" style=\"color:#666666\">3) \u201cSeaweed Foreign Matter Removal Device Case\u201d Tokyo District Court Heisei 10 (Wa) 11453 Case Judgment (Tokyo District Court March 23, 1998)<br>4) \u201cPen-Type Syringe Case\u201d Osaka District Court Case No. 12220 (Heisei 8 (Wa)) (Osaka District Court, May 27, 1999)<br>5) \u201cPen-Type Syringe Case\u201d Osaka High Court Case No. 2198 (Heisei 11 (Ne)) (Osaka High Court, April 19, 2001)<\/p>\n<\/div><\/div>\n<\/div>\n<\/div><\/div>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:100px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h4 class=\"wp-block-heading\">2. Consideration Using Specific Examples<\/h4>\n\n\n\n<p><strong>2-1. <\/strong>As a specific example, we will use an invention related to contact lenses. In reality, the principle of contact lenses is said to have been conceived by Leonardo da Vinci in the early 16th century and later developed by Descartes in the 17th century6); however, for the purposes of this discussion, we will consider this principle as having been conceived for the first time.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">2-2. [Example 1]<\/h5>\n\n\n\n<p>Patent invention X1: Invention of the contact lens itself (so-called pioneer invention)<\/p>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\" style=\"flex-basis:100%\">\n<figure class=\"wp-block-flexible-table-block-table\"><table class=\"has-fixed-layout\"><tbody><tr><td style=\"text-align:center\">Patent invention X1<\/td><td style=\"text-align:center\">Target product, etc. Y1<\/td><\/tr><tr><td>&lt;Claims&gt;<br>\u201cA glass lens for correcting vision by directly attaching it to the eyeball.\u201d Or<br>\u201cA method for correcting vision by directly attaching a glass lens to the eyeball.\u201d<\/td><td rowspan=\"4\" style=\"vertical-align:top\">\u2022 Lenses made of plastic material are used as contact lenses.<\/td><\/tr><tr><td>&lt;Prior art (actual prior art)&gt;<br>\u2022 Only \u201cglasses that are hung on the ears or nose.\u201d<br>\u2022 Only \u201cglass\u201d is used as the lens material.<\/td><\/tr><tr><td>&lt;Effects of the invention&gt;<br>\u2022 Distortion is minimal because it is almost integrated with the cornea.It can be used even when strong vision correction is required, eliminating the need for thick, heavy glasses. It does not fog up, etc.&nbsp;<br>\u203bThe advantages of being made of glass are not specifically mentioned.<\/td><\/tr><tr><td>\uff1cImplementation form\uff1e<br>\u30fbA small glass lens is disclosed, with examples of thickness and size.<\/td><\/tr><\/tbody><\/table><\/figure>\n<\/div>\n<\/div>\n\n\n\n<p class=\"has-white-background-color has-text-color has-background has-small-font-size\" style=\"color:#666666\">6) Information from the Internet (http:\/\/www.jutoku.com\/kontakuto_index6-1.html)<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">2-3. Consideration of the essential parts of Example 1<\/h5>\n\n\n\n<p>How are the \u201cessential parts\u201d of the patent invention X1 defined?<\/p>\n\n\n\n<p>\u2460 First, the differences between the structure of the invention X1 described in the claims and the structure of the target product Y1 are the lens material, namely, a \u2018glass\u2019 lens and a \u201clens manufactured from plastic.\u201d<\/p>\n\n\n\n<p>\u3000 Does this \u201cglass\u201d component constitute an essential element of the present patent invention? Considering that only eyeglasses existed previously and the problems and functions that the present patent invention sought to solve, it is interpreted that the fact that the \u2018lens\u2019 is made of \u201cglass\u201d is not an indispensable element and does not constitute an essential element.<\/p>\n\n\n\n<p>Then, what is the \u201cprinciple of solution\u201d to the prior art problem addressed by the present invention, or what are the \u201ccharacteristic parts\u201d necessary to satisfy the patent requirements? Considering these from the above conditions, the essential part of the present invention X1 is considered to be the \u201clens for correcting vision by directly contacting and attaching to the eyeball\u201d or the \u201cmethod of correcting vision by directly attaching a lens to the eyeball\u201d as stated in the claims.In other words, the idea of directly attaching a lens to the eyeball is the essential part.<\/p>\n\n\n\n<p>&nbsp;As a conclusion of the judgment on the first requirement, the differences between the patent invention X1 and the target product Y1 are not essential parts of the invention X1.<\/p>\n\n\n\n<p>\u2461 In this case, the \u201cessential part\u201d is not understood as having all the structural requirements described in the scope of the claims, but rather as having the structural requirements excluding the requirement of \u201cglass.\u201dBy excluding some of the structural elements, the scope covered by the \u201cessential part\u201d is expanded. At the very least, it is broader than the scope that includes all the structural elements listed in the claims. This means that the core part of the invention described in the claims is considered the essential part.<\/p>\n\n\n\n<p>\u2462 Regarding the limitation of \u201cglass\u201d<\/p>\n\n\n\n<p>At the time of filing, the term \u2018lens\u2019 referred exclusively to \u201cglass,\u201d so the term \u201cglass lens\u201d was used. However, when product Y1 appeared, it became clear that this limitation was unnecessary.<\/p>\n\n\n\n<p>Therefore, in the case of the above determination of the first requirement, if the second to fifth requirements are also satisfied, the target product Y1 is deemed to fall within the scope of equivalence, and as a result, the inclusion of the \u201cglass\u201d requirement in the claims is deemed to be remedied. The validity of this determination will be discussed later (4.).<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">2-4. [Example 2]<\/h5>\n\n\n\n<p>Patent Invention X2: A soft contact lens made of plastic with a high moisture content<\/p>\n\n\n\n<figure class=\"wp-block-flexible-table-block-table\"><table class=\"\"><tbody><tr><td style=\"text-align:center\">Patent invention X2<\/td><td style=\"text-align:center\">Target product Y2<\/td><\/tr><tr><td>\uff1cClaims\uff1e<br>\u30fbA contact lens manufactured from plastic material \u201cA.\u201d<\/td><td rowspan=\"3\" style=\"vertical-align:top\">\u30fbA soft contact lens also made of plastic material, which does not have water absorption and is manufactured from material \u201cB\u201d that has excellent oxygen permeability.<br>Note that \u2018B\u2019 is not included in the concept of \u201cA.\u201d<\/td><\/tr><tr><td>\uff1cPrior Art\uff1e<br>\u30fbConventional (non-highly water-absorbent) plastic soft contact lenses.<\/td><\/tr><tr><td>\uff1cEffects of the Invention\uff1e<br>\u30fbThe lens has water absorption and a high water content, resulting in improved flexibility and comfort compared to conventional soft contact lenses.<\/td><\/tr><\/tbody><\/table><\/figure>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">2-5. Consideration of the essential parts of Example 2<\/h5>\n\n\n\n<p>\u2460 The differences between the structure of Patent Invention X2 and the structure of the target product Y2 lie in the materials of the lenses. Specifically, the lens material of Patent Invention X2 is plastic \u201cA,\u201d while the lens material of the target product Y2 is plastic \u201cB.\u201d<\/p>\n\n\n\n<p>In this case, whether the lens material \u201cA\u201d of Patent Invention X2 constitutes an essential part of the invention is a point of contention. Patent Invention X2 improves upon conventional plastic soft contact lenses by enhancing water content. This improvement was achieved through the selection of materials, which constitutes a characteristic feature of the invention. In other words, soft contact lenses manufactured using material \u2018A\u2019 are the \u201csolution principle\u201d to the conventional problem.<\/p>\n\n\n\n<p>Therefore, the claim that the \u201csoft contact lens for vision correction that is directly applied to and worn on the eyeball\u201d is the only essential part of the invention, disregarding the lens material, is not permissible. Rather, the claim that the \u201clens material \u2018A\u2019\u201d is an essential part of the invention must be added as a claim element.<\/p>\n\n\n\n<p>The lens material of the target product Y2 is \u201cB,\u201d which has non-absorbent properties, and its function is to improve oxygen permeability. Therefore, the two are different in their essential parts. Thus, the first requirement that \u201cthe different parts are not essential parts of the patented invention X2\u201d is negated.<\/p>\n\n\n\n<p>As a conclusion of the judgment on the first requirement, the target product Y2 is not equivalent to the configuration of the patented invention X2 and does not fall within its technical scope.<\/p>\n\n\n\n<p>\u2461 In this determination, the essential parts of the patent invention X2 are understood as the scope defined by the same structural requirements as those described in the claims of the invention.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">2-6. Consideration of cases where the technical background (prior art) differs (hereinafter referred to as \u201cmodified example\u201d)<\/h5>\n\n\n\n<p>In the above Example 1, at the time of filing, the prior art was limited to \u201cso-called eyeglasses worn on the ears or nose,\u201d but if \u2018plastic\u2019 was also known as a lens material in addition to \u201cglass,\u201d would the conclusion regarding the determination of essential elements change?<\/p>\n\n\n\n<p>Since \u201ccontact lens lenses\u201d did not exist at the time, the fact that Patent Invention X1 is a groundbreaking pioneer invention remains unchanged.<\/p>\n\n\n\n<p>&nbsp;However, at the time of filing, since the scope of the patent claims was stated as \u201cglass lenses\u201d despite the fact that, at the time, plastic was also available as a lens material in addition to glass, it is possible to conclude that the requirement for \u201cglass\u201d should be added when determining the essential elements.This judgment would be more clearly justified if the specification or examination process had mentioned the safety of \u201cglass lenses\u201d when directly fitted to the eyeball (even without comparing them to plastic).<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:100px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h4 class=\"wp-block-heading\">3. Differences in the conclusions of the first example, second example, and the above modified examples<\/h4>\n\n\n\n<h5 class=\"wp-block-heading\">3-1. Regarding Patent Inventions X1 and X2<\/h5>\n\n\n\n<p>The claims of Patent Inventions X1 and X2 both describe contact lenses that explicitly specify the material of the lens, and the level of limitation of the structural elements is the same. Additionally, in terms of their relationship to the target products, they share the common feature that the explicitly specified lens materials differ between the target products Y1 and Y2.<\/p>\n\n\n\n<p>In such a situation, while one (Example 1) satisfies the first requirement and the other does not, where does this difference originate?<\/p>\n\n\n\n<p>The two patent inventions differ significantly in terms of their differences from prior art. Invention X1 is a groundbreaking invention that first patented the \u201ccontact lens\u201d technology, which did not exist prior to its invention, and can be considered a pioneer invention.On the other hand, invention X2 is an improvement on an existing technology, namely \u201csoft contact lenses,\u201d and thus represents an improvement on a technology that had already reached a certain level of maturity.<\/p>\n\n\n\n<p>&nbsp;In this way, the essential part of a patent invention is defined by its relationship to the prior art (publicly known technology) that existed at the time of filing, which determines the scope of the invention. This means that the scope of the invention varies depending on whether it represents a groundbreaking leap forward from the prior art,such as a pioneering invention (like the aforementioned \u201ccontact lens\u201d) where no direct prior art exists. In such cases, the essential part of the invention may be defined by excluding certain elements, even if they are explicitly stated in the claims, provided that those elements are not indispensable for solving the problem.<\/p>\n\n\n\n<p>On the other hand, in the case of improvements to existing technology, it is not possible to exclude the structural elements of the improved portion when defining the essential elements. This is because such structural elements are indispensable for solving the problem. Therefore, it was not possible to exclude the material requirements when determining the essential elements of the above invention X2.<\/p>\n\n\n\n<p>In the above example, by comparing a clear pioneer invention and an improvement of prior art, we showed that even if the claims are limited to the same level, the scope of the essential elements differs. However, this is not immediately determined by whether it is a pioneer invention or an improvement, but ultimately depends on the breadth of the claims in relation to the prior art.<\/p>\n\n\n\n<p>Even if an invention is a pioneer invention, if it is possible to claim only the essential elements necessary to solve the problem, the essential elements of the invention will be defined as including all the elements of the claims. Conversely, even if an invention is an improvement, if it is later determined that the claims are overly restrictive, the essential elements may be defined by excluding certain elements.<\/p>\n\n\n\n<p>However, actual pioneer inventions are not always as simple as the above examples; rather, they are often complex, highly sophisticated, and specialized. In such cases, it is likely to be extremely difficult to draft the claims without any unnecessary limitations at the time of the initial filing. This is likely to be more challenging than in cases of improvement inventions where the improvements over prior art are clear.For this reason as well, it is considered reasonable to allow a broader definition of the essential elements in the case of inventions with a high degree of pioneering innovation.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">3-2. Regarding \u201cVariations\u201d<\/h5>\n\n\n\n<p>In the examination of the above variations, although the description of the claims was the same, a different conclusion was reached regarding the identification of the essential elements compared to the first example. The elements that differed from the first example were the relationship between the invention described in the claims and the prior art (further, the content of the specification).<\/p>\n\n\n\n<p>Specifically, at the time of filing, plastic was also known as a general lens material (the specification mentions the safety of glass), and the claims included the term \u201cglass lens.\u201d<\/p>\n\n\n\n<p>After reviewing the prior art and the entire specification, if it is reasonable for others to consider that the lens being made of glass is part of the invention&#8217;s features, it should be determined that \u201cglass\u201d is one of the requirements for defining the essential elements to ensure legal stability.<\/p>\n\n\n\n<p>In this way, even if the invention is a pioneer invention and the description in the claims is the same, the background technology, the description in the specification, and the examination process may influence the determination of the essential elements of the invention.<\/p>\n\n\n\n<p>Furthermore, even if \u201cplastic\u201d is known as a general lens material, if there are difficulties in terms of safety, such as the selection of materials, to make it suitable for direct contact with the eyeball, the second requirement of \u201ceasily replaceable\u201d may not be satisfied.In such a case, even if it is determined that \u201cglass\u201d is not a requirement for defining the essential part, equivalence would not be recognized. However, in a situation where there were difficulties in adopting \u2018plastic\u2019 material, this would likely be taken into account in the determination of the essential part, so ultimately, the likelihood that \u201cglass\u201d would be required in the determination of the essential part would be higher.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">3-3. Determination of Essential Elements<\/h5>\n\n\n\n<p>From the above specific example, it can be understood that, ultimately, when determining essential elements, it is necessary to judge to what extent the exclusion or narrowing of the structural requirements explicitly stated in the claims is permissible from the perspective of legal stability.In making this determination, factors such as the inventiveness (pioneering nature) of the invention, as well as the contribution of the invention to society in general, should be considered, taking into account the purpose of the Patent Act to promote the development of industry and thereby contribute to the public welfare (Patent Act, Article 1).<\/p>\n\n\n\n<p>However, even when referring to pioneering nature, in the world of continuously advancing technology, the difference between a pioneering invention and an improved invention is always a matter of degree, and the \u201cvalue of the invention\u201d in terms of its contribution to society cannot be determined solely by whether it is a pioneering invention or an improved invention (even improved inventions may have significant social contributions). Therefore, it is considered that this determination is not straightforward in practice.More specifically, the difficulty of defining the \u201cessential part\u201d lies in the fact that, when an infringement occurs, it is necessary to make a legal judgment on whether the core of the invention that should be protected, i.e., the \u201cvalue of the invention\u201d sufficient to exclude the claimed elements from the scope of protection and expand the scope of protection, exists within the invention described in the claims, even if this would undermine legal stability.<\/p>\n\n\n\n<p>Moreover, it is precisely because this is such a difficult judgment that the proper identification of the essential elements is essential for determining the appropriate scope of rights.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:100px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h4 class=\"wp-block-heading\">4. Whether it is appropriate to remedy limited descriptions in the scope of the patent claims due to errors in the scope of the patent claims by applying the doctrine of equivalents.<\/h4>\n\n\n\n<h5 class=\"wp-block-heading\">4-1.<\/h5>\n\n\n\n<p>The basis for extracting the \u201cessential elements\u201d of a patented invention and recognizing the scope of equivalents beyond the literal scope of the claims is, as stated in the aforementioned Supreme Court decision, the \u201cdifficulty of anticipating all future infringement scenarios at the time of filing and describing them in the claims,\u201d and the fact that &#8220;allowing substitution with substances or technologies that become known after filing would diminish the incentive to invent, contravene the objectives of patent law, and ultimately violate social justice,<\/p>\n\n\n\n<p>This principle is based on the concept of equity.<\/p>\n\n\n\n<p>Furthermore, the World Intellectual Property Organization (WIPO) Draft Patent Law Treaty states that \u201cthe scope of protection conferred by a patent is determined by the claims\u201d (Article 21(1)(a)), and adds that \u201cclaims shall be interpreted in a manner that combines fair protection for the patent owner with a reasonable degree of legal certainty for third parties. In particular, claims shall not be limited to their literal meaning.\u201d\u201c (same paragraph (b)). This provision affirming the doctrine of equivalents cannot be interpreted as distinguishing between limitations resulting from error and those not resulting from error.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:59px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">4-2.<\/h5>\n\n\n\n<p>Furthermore, the scope of the doctrine of equivalents extends beyond the scope directly defined by the wording of the claims, and the fact that the scope is in question means that the claims are, at least as a result, \u201dtoo narrow.&#8221;<\/p>\n\n\n\n<p>For example, if the element \u201cvacuum tube\u201d was listed as one of the claim elements in the claims of a patent for an innovative \u201cdevice invention,\u201d and this element was later replaced with \u2018transistor\u2019 after the patent application was filed, it could be argued that there was no mistake in the description, as at the time of filing, the only component with amplification functionality was the \u201cvacuum tube.\u201dSimilarly, it is difficult to determine whether it was an error to describe \u201cglass lens\u201d at a time when \u201clens\u201d was only considered to be made of glass.In both cases, when infringement became an issue, it could be argued that the functional description \u201camplification means\u201d should have been used, or that limiting the description to \u201clens\u201d would have been sufficient, i.e., that the limitation was overly restrictive and that the requirement should not have been excluded when defining the essential elements.In any case, it is not easy to determine whether the limitation was unavoidable at the time of filing or merely a matter of carelessness, and it is also a matter of degree.<\/p>\n\n\n\n<p>&nbsp;Ultimately, whether a limitation due to an error can be remedied by the doctrine of equivalents depends on whether the essential elements are accurately determined.It is not the case that the doctrine of equivalents does not apply at all in cases of mere errors, nor is it the case that errors do not result in disadvantages in the application of the doctrine of equivalents.<\/p>\n\n\n\n<p>In other words, at the time of infringement, when it is determined that the limitation is \u201cexcessive,\u201d it is important to make an appropriate legal judgment, taking into consideration the value of the invention and legal stability, as to whether the \u201cconstitutive element\u201d should be excluded in the determination of the essential elements.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:100px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h4 class=\"wp-block-heading\">5. Scope of Equivalence When the Essential Elements Are Determined to Include All the Claimed Elements<\/h4>\n\n\n\n<p>In cases where there is no such excessive limitation, i.e., where the invention is described in the claims with the broadest possible scope relative to the prior art, without any unnecessary limitations, and where only the minimum necessary elements required to solve the problem are described, how would the essential elements be determined?In this case, since the invention cannot be established as a patented invention even if any of the elements are excluded, all the requirements for the description of the claims are considered to be the requirements for defining the \u201cessential elements.\u201d Therefore, in such a case, considering only literal infringement, appropriate protection of the patented invention is ensured, and the application of the doctrine of equivalents is unnecessary.<\/p>\n\n\n\n<p>For example, in the case of the above Example 2, where all the elements of the claims are considered to be elements of the essential parts, this is a case where the invention is claimed without unnecessary limitations. The same applies to Example 1, where \u201cglass\u201d is not specified and only \u201clens\u201d is stated.<\/p>\n\n\n\n<p>In such cases, when it is determined that the differences between the patented invention and the target product, etc., are not essential parts (i.e., when the essential parts are common), the target product, etc., is deemed to include all the elements of the claims. Therefore, in such cases, the target product falls within the scope of the claims and does not involve the issue of equivalence regarding a broader technical scope beyond the literal scope of the claims.<\/p>\n\n\n\n<p>Using the above Example 2 as a concrete example, consider the patent invention X2 (\u201ccontact lenses manufactured from plastic material \u201dA\u201c\u201d). If the target product Y3 is \u201ccomposed of plastic material \u2018A\u2019 and has a special shape at the outer periphery that does not injure the eyeball,\u201d then the target product Y3 is a product that incorporates all the essential elements of the patent invention X2.<\/p>\n\n\n\n<p>This product Y3 is an invention that incorporates all the elements of the patented invention X2 and adds new value, i.e., it is an \u201cutilization invention\u201d of the patented invention X2. This example ultimately falls under the issue of the scope of the wording infringement (i.e., it should be deemed to fall within the technical scope) rather than the issue of equivalence.<\/p>\n\n\n\n<p>Nevertheless, if the five criteria for equivalence are applied to the structural feature of the lens&#8217;s outer peripheral shape, which is the difference between the two, there is a risk of reaching an erroneous conclusion.<\/p>\n\n\n\n<p>First, as mentioned above, the differing part \u201cthe outer peripheral part is shaped in a special way to prevent injury to the eyeball\u201d is not considered an essential part of the patent invention X2, and substitutability is likely to be affirmed since material \u201cA\u201d is used.However, if the third requirement is denied on the grounds that the adoption of the \u201cshape of the outer periphery of the lens\u201d is difficult because it is a feature recognized as having inventive step as an improved invention, this would constitute a significant error.This is because the act constituting literal infringement would not even fall under the doctrine of equivalents.<\/p>\n\n\n\n<p>&nbsp;From this, it can be concluded that the doctrine of equivalents should only be applied when the \u201cessential part\u201d of the patent invention is interpreted as a component that is relaxed (excluded) from the claim&#8217;s description of the components.In other words, it is only when some of the elements of the claims are replaced (differ) that the issue of equivalence beyond the scope of the claims arises.<\/p>\n\n\n\n<p>Applying the five criteria to cases where elements other than the requirements for the description of the claims differ, as described above, is not appropriate when applying the criteria for equivalence established by the Supreme Court.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:100px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h4 class=\"wp-block-heading\">6. Relationship with the other four requirements<\/h4>\n\n\n\n<h5 class=\"wp-block-heading\">6-1. Significance of the first requirement (essential part) in relation to the other four requirements<\/h5>\n\n\n\n<p>The first through fifth requirements are \u201cand\u201d conditions, and if any one of them is not satisfied, the application of the doctrine of equivalents is not recognized.<\/p>\n\n\n\n<p>Therefore, even if the other four requirements are deemed to be satisfied, if the first requirement is not satisfied, i.e., if the differing parts constitute essential parts, the doctrine of equivalents does not apply. However, is such a case actually possible? If not, then in practice, the first requirement would be irrelevant, and consideration of the other four requirements alone would suffice. This will be examined below.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">6-2.Consideration in relation to the second requirement (substitutability) and the third requirement (ease of substitution)<\/h5>\n\n\n\n<p>Regarding the requirements of substitutability and ease of substitution, considering the invention X2 in the above [Example 2], if the target product Y4 is a \u201csoft contact lens made of material C,\u201d and material C not only has the same moisture content as A but also has oxygen permeability, what would be the case?<\/p>\n\n\n\n<p>At the time of the infringing act, if it was known that the plastic material \u201cC\u201d had the same water content as \u201cA,\u201d the second and third requirements would be satisfied. However, as mentioned above, the characteristic of the patented invention X2 is that it uses material \u201cA,\u201d and this cannot be excluded from the essential elements of the claim. Therefore, the target product Y4 does not satisfy the first requirement, and the doctrine of equivalents does not apply.In this way, the determination of the first requirement serves to prevent the scope of the doctrine of equivalents from expanding excessively by setting the timing for assessing substitutability at the time of infringement (the inhibitory function of the first requirement regarding the expansion of equivalence).<\/p>\n\n\n\n<p>Additionally, we will consider the relationship between the third requirement and the first requirement when the first requirement is satisfied. According to the aforementioned \u201cSupreme Court Case Law Commentary,\u201d \u201cthe requirement regarding essential parts has traditionally been explained as \u2018identity of technical ideas\u2019 or \u2018identity of the underlying solution principle.\u2019\u201d7) Furthermore, it is stated that \u201cthe present judgment used the expression \u2018essential part of the patented invention\u2019 regarding this requirement because it appears to have deliberately avoided the expression \u2018identity of the technical idea\u2019 in order to address the criticism that \u2018evaluating the technical idea as identical is synonymous with recognizing equivalence, and listing the identity of the technical idea as a requirement for equivalence would constitute a tautology (synonymous repetition)\u2019\u201d8).<\/p>\n\n\n\n<p>If the commonality of essential parts is interpreted as the identity of technical ideas, then if the differences between the two are determined to be non-essential parts (satisfying the first requirement) through proper judgment, it can also be considered that the second requirement (substitutability) and the third requirement (ease of substitution) are simultaneously satisfied.<\/p>\n\n\n\n<p>However, in the above [Example 1], the use of \u201cplastic material\u201d as a contact lens is not merely a transfer but was adopted after extensive trial and error to ensure safety, thereby significantly altering the nature of contact lenses. In such cases, even if the first requirement is satisfied, it may be deemed that the second requirement (substitutability) is not satisfied.<\/p>\n\n\n\n<p>Nevertheless, even in such cases, the background of the relevant technical field should be considered when determining the essential elements of the patent invention. Therefore, \u201cglass\u201d would also become a criterion for defining the essential elements, and the first requirement itself might not be satisfied.<\/p>\n\n\n\n<p>Nevertheless, the issue of the difficulty of using plastic as a contact lens material should be discussed separately as a matter for determining the third requirement, as this would maintain the clarity of the judgment. Therefore, it is considered that there is significance in separately determining the third requirement after determining the fulfillment of the first requirement.<\/p>\n\n\n\n<p class=\"has-white-background-color has-text-color has-background has-small-font-size\" style=\"color:#666666\">7) Footnote 1) \u201cSupreme Court Case Law Commentary,\u201d pages 194, lines 1\u20132<br>8) Footnote 1) \u201cSupreme Court Case Law Commentary,\u201d page 195, line 17 to page 196, line 1<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">6-3. Relationship with the Fifth Requirement (Absence of Estoppel, etc.)<\/h5>\n\n\n\n<p>Using the above \u201cexample of modification,\u201d in a situation where both glass and plastic were selectable as lens materials at the time of filing, if the safety of \u201cglass lenses\u201d was described in the specification or during the examination process in relation to direct application to the eyeball, it is considered that \u201cglass\u201d would be deemed a requirement in determining the essential elements.<\/p>\n\n\n\n<p>Therefore, \u201cglass contact lenses\u201d and \u201cplastic contact lenses\u201d would differ in their essential parts. In such a case, if it is determined that merely stating the safety of glass does not constitute an intentional exclusion of plastic materials, and the fifth requirement is deemed satisfied, the application of the doctrine of equivalents would be restricted by the first requirement.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:100px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h4 class=\"wp-block-heading\">7. Burden of Proof and Order of Determination for the First Requirement7<\/h4>\n\n\n\n<h5 class=\"wp-block-heading\">7-1.<\/h5>\n\n\n\n<p>The burden of proof for the first requirement lies with the patent holder. In the aforementioned Supreme Court ruling, the first requirement is \u201cthat the right portion is not an essential part of the patented invention,\u201d and from this wording, it can be inferred that the patent holder is responsible for asserting and proving that the differing portion is not an essential part.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:50px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h5 class=\"wp-block-heading\">7-2.<\/h5>\n\n\n\n<p>If the first requirement is considered to be a judgment on the identity of the technical concept, although it is listed as the first requirement, it is not necessarily required to be made prior to other requirements. There is also the view that the first requirement should be judged as part of a comprehensive judgment after considering the second requirement or other requirements.<\/p>\n\n\n\n<p>In particular, it is closely related to the judgment on the second requirement.If the first requirement is satisfied, i.e., if the essential part remains unchanged even when the portion is substituted, the substitution occurs in a situation where the same effect is achieved, and thus the possibility of substitution is satisfied.<\/p>\n\n\n\n<p>However, even in such cases, determining what constitutes the essential part of the patented invention\u2014which is part of the judgment of the first requirement\u2014is necessary for assessing other requirements and should therefore be conducted beforehand.In other words, if the essential elements of the patented invention are not defined, it is difficult to assess other requirements such as substitutability, obviousness, or estoppel. Additionally, as mentioned earlier, if the requirements for the description of the scope of the claims and the requirements for the essential elements are consistent, the issue of equivalence does not arise. Therefore, it is considered that identifying the essential elements should be the first step in assessing infringement.<\/p>\n<\/div>\n<\/div>\n\n\n\n<div style=\"height:100px\" aria-hidden=\"true\" class=\"wp-block-spacer\"><\/div>\n\n\n\n<div class=\"wp-block-columns is-layout-flex wp-container-core-columns-is-layout-9d6595d7 wp-block-columns-is-layout-flex\">\n<div class=\"wp-block-column is-layout-flow wp-block-column-is-layout-flow\">\n<h4 class=\"wp-block-heading\">8. Conclusion<\/h4>\n\n\n\n<p>As discussed above, in determining the first requirement, the \u201cessential elements\u201d are extracted based on the description of the claims themselves, the detailed description in the specification, prior art, and the application history, as well as pre-application peripheral technology.Therefore, even if certain limiting requirements exist in the description of the claims, the core idea of the claims may be extracted, thereby excluding such limiting matters. This can be regarded as the first step in expanding the scope of rights from the literal scope of the claims to the scope of equivalents. However, as mentioned above, the determination of the first requirement also serves to prevent the application of the doctrine of equivalents from being overly expanded.<\/p>\n\n\n\n<p>Therefore, the determination of the essential elements that possess both the functions of expansion and restriction in the delimitation of the scope of rights is a highly important matter. It is only through such a determination made under a proper balance between legal stability and the protection of the value of inventions that an appropriate and moderate scope of rights, i.e., the scope of equivalents, can be established.<\/p>\n\n\n\n<p>Note that the above statements are based on the author&#8217;s considerations as part of the Essential Elements Review Committee and do not represent all matters discussed in the committee. They include the author&#8217;s personal opinions.<\/p>\n<\/div>\n<\/div>\n<\/div>\n<\/div>\n","protected":false},"excerpt":{"rendered":"<p>Publication Patent Attorney Toshiaki Eto would like to introduce some of his papers related to the \u201cessence of invention\u201d that he has written to date. A four-part series on the essence of invention Part 1&#8230;<\/p>\n","protected":false},"author":2,"featured_media":0,"parent":3021,"menu_order":502,"comment_status":"closed","ping_status":"closed","template":"","meta":{"inline_featured_image":false,"_locale":"en_US","_original_post":"http:\/\/wp02.local\/?page_id=518","footnotes":"[]"},"class_list":["post-3045","page","type-page","status-publish","hentry","en-US"],"_links":{"self":[{"href":"https:\/\/www.sakae-pat.jp\/wp-json\/wp\/v2\/pages\/3045","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.sakae-pat.jp\/wp-json\/wp\/v2\/pages"}],"about":[{"href":"https:\/\/www.sakae-pat.jp\/wp-json\/wp\/v2\/types\/page"}],"author":[{"embeddable":true,"href":"https:\/\/www.sakae-pat.jp\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.sakae-pat.jp\/wp-json\/wp\/v2\/comments?post=3045"}],"version-history":[{"count":10,"href":"https:\/\/www.sakae-pat.jp\/wp-json\/wp\/v2\/pages\/3045\/revisions"}],"predecessor-version":[{"id":3075,"href":"https:\/\/www.sakae-pat.jp\/wp-json\/wp\/v2\/pages\/3045\/revisions\/3075"}],"up":[{"embeddable":true,"href":"https:\/\/www.sakae-pat.jp\/wp-json\/wp\/v2\/pages\/3021"}],"wp:attachment":[{"href":"https:\/\/www.sakae-pat.jp\/wp-json\/wp\/v2\/media?parent=3045"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}