[Patent★] Litigation Seeking of Rescinding the Trial Decision Case: A case in which a general problem that could be recognized by a person skilled in the art on the filing date of the patent application is also applicable to the cited invention, although there is no reference to the cited reference, therefore, the motivation is admitted. A case in which the Intellectual Property High Court denied the inventive step and rescinded the JPO decision.

January 16,2023

Intellectual Property Hight Court Case No.10120 (Gyo-ke) 2019, May 19, 2021 Presiding Judge TSURUOKA

[Summary of the Judgement and Comments]

1. Summary of the Judgement

The court held that“the problem of the occurrence of adverse thrust force (adverse thrust load condition)”was not directly mentioned in the primary reference (Ko 1), but was described in the publicly known reference (Ko 2) as follows. Therefore, the court concluded that it was easy to conceive the invention (to fulfill the difference 3) by combining the main reference with the publicly known technology (Ko 2 – 5) in order to solve the same problem.

“[I]t is found that a person skilled in the art could have recognized that the problem of the adverse thrust force (adverse thrust load condition) … occurs generally with screw compressors and that it also occurs with the screw compressor of Exhibit Ko 1 Invention. As mentioned above, the problem of the occurrence of adverse thrust force (adverse thrust load condition) can also be recognized with Exhibit Ko 1 Invention. Therefore, it is found that there is a motivation to install a non-pressurized route to resolve adverse thrust load in order to resolve the problem. Based on the above, even if there is no direct statement in Exhibit Ko 1 concerning the technical problem of occurrence of adverse thrust force (adverse thrust load condition) and resolution thereof, it is found that the motivation to install a non-pressurized route arises with Exhibit Ko 1 Invention in order to resolve the problem.”

2. Some Consideration

Recently, the importance of the problem of the invention in determining inventive step has been emphasized, and both the problem of the invention and the problem of the cited invention are important factors, and there are some court cases denying inventive step on the basis of the difference between the problem of the invention and the problem of the cited invention.

On the other hand, there are court cases that have denied inventive step, even if the problem of the invention and the problem of the cited invention are not necessarily the same, by adopting the logic that the invention was conceived as a result of solving a problem different from that of the invention.

In this connection, there are a certain number of court cases, such as this case, that denied inventive step on the grounds that a general problem, an obvious problem, or a natural problem that could be recognized by a person skilled in the art on the filing date of the patent application was admitted even if it was not mentioned in the cited reference, and that this was also applicable to the cited invention.

Although we have introduced only court cases that denied inventive step, there are more court cases that recognized inventive step (as of the end of 2021), so it is advisable to practice with a sense of balance rather than relying entirely on these court cases.

Writer: Hideki TAKAISHI

Supervising editor: Kazuhiko YOSHIDA

Hideki TAKAISHI

Attorney at Law & Patent Attorney

Nakamura & Partners

Room No. 616, Shin-Tokyo Building,

3-3-1 Marunouchi, Chiyoda-ku,

Tokyo 100-8355, JAPAN

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