Transition in Judgment of Inventive Step in Japan – “Same Technical Field Theory” created “Hindsight”

By Masashi Yanagida

Posted: 25th February 2014 08:34

The standard of judgment regarding inventive step or un-obviousness in examination of patent applications, and also, the standard of judgment of validity of patents has changed with the times in the Japanese patent practice.  The recent notable change of the standard was observed as follows.
 
Until the year of 2000, the Japan Patent Office (JPO) and the District Courts and the High Courts (Intellectual Property-related cases were exclusively handled only by Tokyo High Court and Osaka High Court prior to April 1, 2005) adopted the “Same Technical Field Theory” for judging the inventive step or un-obviousness of claimed inventions, and the judgments regarding inventive step or un-obviousness had been extremely strict –that is, it was easy to reject patent applications or invalidate patens for the reason of lack of inventive step or un-obviousness.  In the “Same Technical Field Theory”, a prior art reference closest to the invention of a patent application or patent is determined as the main reference.  The prior art reference is selected from the same technical field as that of the claimed invention of the patent application or patent.  Even in cases that the prior art reference does not belong to the same technical field in a strict sense, the prior art reference is treated as having cleared the hurdle of being in the same technical field if there is a certain degree of technical commonality.  Then, auxiliary prior art references are also selected from the same technical field or from the technical field that has technical commonalities with the same technical field and thus treated as being in the same technical field.  Where the main reference and the auxiliary references thus belong to the same technical field, they are regarded as being readily combinable to achieve the invention.  As a result, the judgments were made based on a so-called “Hindsight” that concluded that the teachings of cited references were readily combinable to achieve the claimed invention.  Hence the inventive step or un-obviousness of a lot of inventions were denied and a lot of patent applications were rejected in the examination at the JPO.  Likewise or more strictly, a lot of patents attacked by invalidation trial were regarded invalid at the District Courts and High Courts.   
 
The courts applied a stricter standard of judgment regarding inventive step than the JPO, and many cases (60 to 70 %) in which inventive step had been judged to be present in appeals were overturned in the courts.  The rate of the overturned cases was 60 to 70% for the patents in the mechanical field around 2000.
 
In the year of 2000, the JPO revised the Examination Guidelines in order to correct the discrepancy with the standard of judgment adopted by the courts.   As a result, judgments regarding inventive step rendered by the JPO became stricter.  The JPO takes steps as follows in the course of examination to evaluate the inventive step:

 - Identify claimed invention of the application.  Identify a prior art reference closest to the claimed invention of the application (main reference.)
 - Identify differences or gap between the claimed invention of the application and the invention disclosed in the main reference.
 - Identify an auxiliary prior art reference or references which would fill the gap between the claimed invention and the main reference (auxiliary reference(s.))
 - Render judgment regarding lack of inventive step or un-obviousness combining the auxiliary reference(s) with the main reference with respect to the differences, taking the following into consideration:

a) Relationship of technical fields
b) Commonality of objectives
c) Commonality in operations/functions
d) Contents suggested in the main reference
 
However, inventions are judged to exhibit inventive step or un-obviousness in cases that there are factors that inhibit combination or substitution or in cases that unpredictable advantageous effects are obtained.
 
From about the year of 2008, court decisions that raise alarms against facile justifications of denial of inventive step by the JPO have been increasing, cases in which inventive step is denied based only on the “Same Technical Field Theory” have been decreasing, and many cases in which inventive step had been denied in appeals were overturned in the Intellectual Property High Court (IP High Court).  (IP High Court was established on April 1, 2005 to exclusively handle IP-related litigations.  Appeals against decisions made by the Board of Appeals of the JPO are also exclusively handled by the IP High Court as the former Tokyo High Court.) The rate of the overturned cases increased up to 30% in 2009 from 10% in 2007.
 
Example: In H20 (2008) (Gyo-Ke) 10096 “Connecting Member for Circuits”, the IP High Court ruled that “It is insufficient for it to be possible to presume that those skilled in the art would have attempted to achieve the features of the invention.  It is necessary for there to be an implication suggesting that those skilled in the art must have made such attempts with the intention of achieving the features of the invention.”  That is, the “presence of motivation (suggestion)” is required in order to render a judgment of obviousness or lack of inventive step.
 
From 2008 to present, both the Courts and the JPO have been providing “more detailed logical explanations” when denying inventive step, and the standard of judgment regarding inventive step has become more relaxed compared to the past.  It can be said that, at present, there is not a great difference between the standards of judgment regarding inventive step adopted by the Courts and by the JPO.
 
Accordingly, if it is judged that a claimed invention of an application would have been easily invented based on a combination of a plurality of references within the same technical field but there is no motivation or implication to combine the teachings of the references during examination, it is considered prudent to contend that the Examiner employed “hindsight” to reject the application in order to overcome or traverse the rejection.  Likewise, in an invalidation trial or in an infringement suit where the infringer challenges the validity of the patent contending that a claimed invention of a patent would have been easily invented based on a combination of a plurality of references within the same technical field, it is advisable to contend that the logic to attack the validity of the patent is based on “hindsight.”
 
Masashi Yangagida 

Founder of the patent law firm, YANAGIDA & ASSOCIATES established in Tokyo in 1973 and relocated to Yokohama in 1995.Director-General of International Activities Centre of the Japan Patent Attorney Association (JPAA) (April 2008-March 2010); Served as an Examiner of Patent Attorneys Examination (2003-2004); Vice President of the JPAA (1986).  Specialised in prosecution of patent applications and giving opinions on infringement and validity.  Entitled to handle IP-related litigations.  Member of JPAA, FICPI, AIPPI, INTA, ECTA, APAA and JTA.  Registered as Patent Attorney in 1969.  B.S. Graduate of Nagoya University majoring in Applied Physics (1966).
 
email: yanagida@yanagidapat.com
URL:  www.yanagidapat.com
Tel: +81454 752623
Fax: +81454 752673

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