Issue ① ― Regarding an “unpredictable and remarkable effect” to be taken into consideration in determining an inventive step
<The Present Decision of the IP High Court> The Court considered whether or not the Present Invention has an unpredictable and remarkable effect in line with the criteria for judgment indicated by the Supreme Court, and in conclusion, the Court acknowledged such an effect and determined that the Present Invention has an inventive step.
Issue ② ― Role of an “unpredictable and remarkable effect” in determining an inventive step ― the adoption of a theory of “independent requirement”
<The Present Decision of the IP High Court> The Court adopted an “independent requirement” theory and clarified that the binding effect of the previous lawsuit judgment which determined to the effect that the structure (use) of the Present Invention would have been easily conceivable (IP High Court Case No. 2013 [Gyo-ke] 10058 [Presiding Judge TOMITA]) does not block the argument of an “unpredictable and remarkable effect” of the Present Invention.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
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