2016.08.08
Recent IP High Court's view on the inventive step
PATENT
Recent IP High Court's view on the inventive step
Recently, the Intellectual Property High Court has issued many decisions that reverse the Japan Patent Office’s trial decisions to deny inventive step.
From around the end of the last year until today, there have been many rulings with a tendency of what is called "pro-patent" in terms of the IP High Court’s view on the inventive step, and we will report such court decisions while introducing some cases.
Recently, before giving the decision, the IP High Court has more carefully examined than ever the difference between the patented invention and the invention of the main cited document ("Main Cited Invention"), from the viewpoint of whether there is a motive to apply other known art to Main Cited Invention, and whether there is a circumstance that hinders addition to or substitution of Main Cited Invention. In consequence, it became noticeable that the trial decisions to deny inventive step, once made by the Trial Examiners of the Japan Patent Office (JPO), have been reversed in the suits for cancellation of trial decision.
- (1) Case regarding "Mud cover for rotary tiller" (IP High Court, suit against trial decision of invalidation, No. 2015-10094) decision made on March 30, 2016
In the present instance, there is a difference between the present invention and the invention as achieved by the application of the invention of the cited document 2 (Cited Invention 2) to the invention of the cited document 1 (Cited Invention 1). The Trial Examiners of the JPO deemed this difference as a design choice, and determined that the patent was invalid.
To the contrary, the conclusion of the IP High Court was that the trial decision should be cancelled, because the Trial Examiners made an error in the judgment.
The court decision states as follows: "the present patented invention would be achievable by applying, to Cited Invention 1, the technology easily conceived of from Cited Invention 2. In this manner, to conceive of the arrangement of the present invention according to the difference from Cited Invention 1 needs two steps and requires special efforts, and thus it is unreasonable to say that it would have been easily conceived of by those skilled in the art." This sentence can be read as if it showed a universal standard to the following effect: "in the case where the arrangement of the present patented invention according to the difference is conceived of from Cited Invention 1 through two steps, even when the second step corresponds to a minor difference or a design choice, it should not be determined that the present patented invention would have been easily conceived of".
In the next paragraph of the court decision, the technology was further specifically examined, and it was determined that the difference from the combination of Cited Inventions 1 and 2 is oriented in the direction opposite to the direction by the suggestion of Cited Invention 2, i.e., teaching away from Cited Invention 2, and thus it would not have been easily conceived of. Conventionally, the conclusion was reached based on this specific determination alone. Nevertheless, the court decision describes as if they showed a universal standard. It looks just like the IP High Court tries to transmit its own criterion through the court decisions. - (2) Case regarding "Neck stretching pillow" (IP High Court, suit against trial decision of refusal, No. 2015-10165) decision made on March 23, 2016
The present patented invention relates to a "pentagonal column-shaped neck-stretching pillow made of an elastic material". Cited Invention shares the following feature with the present patented invention: "a polygonal column-shaped pillow made of an elastic material, to be placed under a neck". However, they are different in that Cited Invention is directed to a "pillow easily rollable and one side connecting two polygonal surfaces can be positioned at a desirable site of the neck". In the specification of Cited Invention, it is described that the examples of the shape of the easily rollable pillow include a circular cylinder and an octagonal column.
The Appeal Board of the JPO made a trial decision to deny the present patent application for the reason that replacing the octagonal column of Cited Invention with the pentagonal column would have been easily conceived of by those skilled in the art even if there is no apparent motivation.
However, the IP High Court gave their attention to the fact that the present patented invention is directed to a technology for facilitating pressing one’s body against a pillow which is unlikely to roll and this objective is achieved by adopting a pentagonal column-shape. The judge further focused on the effect of the invention that the pentagonal column shape is remarkably excellent in that the pillow is stable and facilitates stretching exercise, as compared with the trigonal column shape or heptagonal column shape. According to the judgement by the IP High Court, those skilled in the art who have taken the octagonal column-shaped pillow (Main Cited Invention) as a start point would have conceived of changing the octagonal column-shape into a column with a polygonal cross section with more corners, but under the circumstance that there is no other prior art document, those skilled in the art would never have conceived of changing the shape of the pillow into a column with a polygonal cross section with less corners. Based on this notion, the IP High Court made a decision that the patent is valid, while cancelling the trial decision by the Trial Examiner of the JPO who commented that the present invention would have been easily conceived of.
In my opinion, this case does not show a standard decision. It is surprising that the court made such a level of decision that the pentagonal column pillow is not easily conceived of when the octagonal column pillow is cited as prior art.
Nevertheless, from the viewpoint of the future business, we should pay attention to the fact that the IP High Court is delivering the information through the court decision that, regarding a difference which is seemingly a design choice, it should be determined whether the difference is easily conceived of, after the design concept and the possible hindrance of the application of Auxiliary Cited Invention to Main Cited Invention are closely examined based on the specification of Main Cited Invention.
Other than the above-mentioned two court decisions, there are many cases in which the IP High Court reversed the JPO’s trial decision to deny the inventive step. In general, the JPO will adjust their directions so as not to make their decisions reversed by the IP High Court. Accordingly, it is expected that also in the JPO, there will be more cases where an application is granted for a minute difference from the prior art is deemed to have a technical value.
