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Q142. Claim Interpretation

Q142. Claim Interpretation
 How does the Japanese court interpret a claim?

A142. In assessing whether a claim reads on an accused product or process, the court first considers the explicit claim language under the Patent Law Art. 70(1). However, if the claim language is indefinitely vague and ambiguous, the court can consult the specification and the drawings, wherein the court may consider the object, advantages and/or individual embodiments. Basically, the essence of the claimed invention does not reside in the object and/or advantage but in the structure. On December 26, 1991 in the “Lightweight Coated Paper Case,” the Tokyo High Court held, in favor of the plaintiff (patentee), that the accused product was different in its objective from the patent’s but had the same technical features as those recited in the claims.
 Defendants often try to defend themselves by insisting that their product or process achieves no such advantages expected by the patent. However, the advantages mentioned in the specification are not always intended to delimit the invention. The advantages are arbitrary predictions rather than facts, lacking the objectivity. The alleged advantages should be distinguished from “industrial applicability (utility)” as one of the requirements for patentability.
 Specific embodiments or examples are generally provided for illustrative purposes and are not considered to limit the scope of the invention, except when the claim language is unreasonably broad beyond the description. The excessively broad scope of the claim will be contrary to the policy of the patent system where a patent is given in return for disclosure of the invention to the public. In cases where the scope of the claim is indefinite in light of the embodiments and/or prior art, defendants often refer to the prosecution history.