table of contents
[Matters determined]
If an applicant for utility model registration gives a warning to a third party by presenting a document describing the content of the invention related to the utility model registration application after the application has been published, and then makes amendments to the scope of the claims, If the amendment narrows the scope of the claims and the product worked by a third party falls within the technical scope of the invention both before and after the amendment, the applicant may claim compensation without warning again. This is a case in which it was possible to do so.
[Summary of the judgment]
...The utility model registration applicant gave a warning to a third party after the application was published by presenting a document containing the details of the invention related to the utility model registration application, and the application was published by a third party. If the scope of the registered claims is amended by an amendment after the content of the device pertaining to the utility model registration application has been known, the amendment expands or changes the original scope of the registered claims, and a third party's Although the product being practiced did not fall within the technical scope of the invention according to the statement of the registered claims before the amendment, it does fall within the technical scope of the invention according to the statement of the registered claims after the amendment. In such a case, in order for the applicant to file a claim for payment of compensation against a third party based on Article 13-3 of the Utility Model Act, the applicant must submit the same request to the third party again after the amendment. Although it is necessary for a third party to know the content of the amended scope of registered claims by issuing a warning as prescribed in the Article, the extent to which the amendment covers the matters stated in the specification or drawings originally attached to the application. If the scope of the registered claims before the amendment is restricted within the scope of the amendment, and the product worked by a third party falls within the technical scope of the invention both before and after the amendment, the amendment shall be followed by another warning, etc. It is reasonable to understand that it is not necessary for a third party to know the content of the amended scope of registered claims.
In light of the legislative purpose of the same article, which requires a warning or bad faith in order to prevent a third party from being surprised by a sudden claim for compensation, only in the former case should a new warning or bad faith be required. This is because, in the latter case, even if there is no further warning or request for malice, it will not result in a surprise attack on the third party.
[Judgment date] July 19, 1988
[Court] Third Petty Bench of the Supreme Court
[Case number] 31 (O) No. XNUMX, etc.
[Judgment summary person] Kentaro Tsuruta, patent attorney
[URL of full text of judgment]
https://www.courts.go.jp/app/files/hanrei_jp/204/052204_hanrei.pdf
