Inventive step and “effect”
After Supreme Court case 2018(Gyo-Hi)69
(Conclusion)
Inventive step is found based on “effect”.
Even if the construction of the present unventuin is easily conceivable, inventive step was recognized as having a remarkable effect which cannot be predicted by a person skilled in the art.
⇒ “Effectiveness” is positioned as an “Independent Requirement” for inventive step.
The Previous Lawsuit Judgment did not determine to the extent of whether or not each of the Present Inventions has such an unpredictable and remarkable effect; and therefore, it is construed that the binding effect of the Previous Lawsuit Judgment (Article 33, paragraph (1) of the Administrative Case Litigation Act) does not extend to this issue.
<Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)>
https://www.ip.courts.go.jp/app/files/hanrei_en/741/002741.pdf