“Foods comprising a rice saccharified material and a rice oil and/or inositol (rice milk)” Case: A case in which the court suggested that a “problem to be solved by the invention” could be interpreted differently in the case of determination of support requirement and in the case of determination of inventive step.
This is a suit against the JPO decision which revoked the plaintiff’s patent titled “FOOD PRODUCT CONTAINING RICE SACCHARIFIED MATERIAL AND RICE OIL AND/OR INOSITOL” on the grounds of the violation of the support requirement by identifying a problem to be solved by the invention in a concrete and limited way, or, finding that “an objective of Invention 1 is to provide a rice milk having a significant difference in richness (milky flavor), sweetness, and deliciousness as compared to the rice milk of Example 1-1”. The court however rescinded said JPO decision on the grounds of the compliance with the support requirement. In the judgment, the court stated the generalization that it is required “to find a problem to be solved by the invention in principle, which is a prerequisite for the determination of the conformance of the supporting requirement, on the basis of the description of the Detailed Description of the Invention in view of common technical knowledge”, and that when identifying a problem to be solved by the invention, the common general knowledge at the time of filing may be taken into consideration only in the “case of exceptional circumstances, e.g., where the Detailed Description of the Invention did not at all mention the problem”, and the court then identified the problem indicated in an abstract and unlimited way in the description, stating that “it can be definitely understood from the Detailed Description of the Invention that the invention has an objective to ‘provide a rice saccharitied material-containing food with richness, sweetness, deliciousness, etc.’ by itself.”
With regard to the relationship between a problem to be solved by the invention in the case of determination of support requirement and a problem to be solved by the invention in the case of determination of inventive step, the court stated to the effect that when determining whether the support requirement is satisfied or not, it is required to identify a problem to be solved by the invention from the statement in the Detailed Description of the Invention, more specifically, the court found that:
“⋯ the conformance to the description requirements is a matter of the descriptions of the scope of the claims and the Detailed Description of the Invention. Thus the determination should be made primarily on the basis of these descriptions. The finding and the extraction of a problem should be made similarly on the basis of the descriptions unless there are any exceptional circumstances as mentioned above.
Therefore, the state of art as of the filing is only a matter to be considered auxiliary in order to understand the description, and thus it should not be inherently treated as a matter to extract a problem.”
And the court clearly acknowledged that a problem to be solved by the invention could be interpreted differently in the case of determination of support requirement and in the case of determination of inventive step, stating that “In other words, as long as a problem to be solved by the invention may be read from the Detailed Description of the Invention, it is sufficient to determine the conformance of the supporting requirement on the basis of the problem. It is neither necessary nor reasonable to further incorporate well-known technique and publicly-known technique in the name of considering the state of art as of the filing and find a problem different from that described in the Detailed Description of the Invention. The comparison with the state of art as of the filing should be made, if necessary, as a matter of inventive step.” (The foregoing statement was an obiter dictum, because inventive step was not at issue in this case, and therefore a problem to be solved by the invention was not interpreted differently in the case of determination of support requirement and in the case of determination of inventive step.)
Patent practitioners need to pay attention to the fact that a case in which the court clearly acknowledged that a problem to be solved by the invention could be interpreted differently in the case of determination of support requirement and in the case of determination of inventive step as in the case of this suit is not found in the past court cases. (A judgment of a “Pyrimidine derivatives” case [a grand panel case of the IP High Court, Case No. 2016 (Gyo-Ke) 10182] rendered prior to the judgment of this case was along with the same line with the judgment of this case in that the court found that “the determination of whether or not to conform to the support requirement should be made from the above viewpoint, and the determination of the inventive step should not be encompassed into the framework”.)
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: h_takaishi@nakapat.gr.jp
Hideki TAKAISHI (The person in charge of this Article)
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku
Tokyo 100-8355, JAPAN