In this case, the Court stated that in order to find that an “invention of a product is described in the publication” (Article 29, Paragraph 1, Item 3 of the Patent Act), it is necessary for a person skilled in the art to be able to make a product on the basis of the description of the publication and common general knowledge as of the filing of the Present Patent (hereinafter referred to as “as of the filing”), and the Court denied the eligibility for cited reference 1 on the grounds that cited reference 1 fails to describe a device of the cited invention 1 in such a manner as to enable a person skilled in the art to manufacture it even in view of the description of cited reference 1 and the common general knowledge as of the filing and rescinded the JPO decision revoking a patent at issue.
A cited reference is required to describe a cited “invention”, and in this context, eligibility for the cited reference has been deliberated in court cases. This judgment is consistent with such court cases.
The reason why this case was taken up here is because the IP High Court (Grand Panel) decision in “PYRIMIDINE DERIVATIVES” case of April 2018 clearly confirmed that a main or primarily cited invention is required to be an “invention described in a publication”, and this case is highly consistent with current trends in court cases, for example, the “MEDICINE” case related to a prior user right (the decision of which was rendered around the same time as the decision of the foregoing IP High Court case), in which the court focused on whether or not an invention embodied in a sample product is identical to the patented invention, stating in obiter dictum that even if the content of a sample drug falls within a numerical range of the patented invention, it is not reason enough to recognize the establishment of the right based on prior use of the “invention”.
The court may find that even if a publicly known product falls within a numerical range of a patented invention, it is not reason enough to find such a publicly known product to be a publicly worked “invention”. Considering the foregoing in parallel with this case, even if a person who made a publicly known product could make such a publicly known product, whether or not “a person skilled in the art (a person who has common general knowledge in the art to which the claimed invention pertains) could make such a publicly known product may become an issue. It could be that when a production method of a product is kept in confidence as know-how, any person who later succeeded in making such a product may obtain a patent therefor. There are court cases in which the court found a product invention with numerical limitation to have novelty and inventive step recognizing that the fact that a numerically limited “product” could be manufactured is in itself of technological significance, for example, Case No. 2007 (Gyo-Ke) 10430 and Case No. 2002 (Gyo-Ke) 418.
If a main or primarily cited invention is strictly required to be an “invention described in a publication”, a claimed invention which is the same as conventional technology may be found to have novelty and inventive step. Therefore, how a person who has been implementing such conventional technology is protected will become an issue.
(The writer considers it appropriate to apply the “rule of prior art defense”.)
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: firstname.lastname@example.org
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