JPO's Investigation Results concerning Inventiveness.

-Trend of Inventiveness of Patent Inventions in Japan- JPO's investigation results concerning Inventiveness

The U.S. Supreme Court’s decision in KSR Int’l Co. vs. Teleflex Inc (April 30, 2007) has drawn much attention from concerned parties in Japan.
The criteria for determining non-obviousness (inventiveness) of a claimed invention is a hot issue debated recently even here in Japan. As one example of this trend, results of an investigation conducted by the JPO are introduced below.

In March of 2007, the JPO had released, on its website, the results of an investigation/study conducted on fiscal year 2006 regarding inventiveness of an invention (or non-obviousness for countries such as the U.S.).
Under the situation where there are views in the industrial world that the criteria of inventiveness of the JPO or Japanese Courts is too strict and should be internationally harmonized, the JPO, starting from Spring of last year, had conducted (1) case study of individual cases and (2) investigation/study on overseas systems and practices. The results of these studies have been compiled as a report and a summary of the report is presented below.

(1) Case study of individual cases

An investigative commission comprising delegates from the industrial world, lawyers, patent attorneys, and JPO examiners was organized. Among recent suits against appeal/trial decisions that favored rejection/invalidation decisions by the JPO, eight cases found to have doubtful inventiveness decisions were chosen and discussed in detail case by case through section meetings and general meetings.

The results of these discussions are as follows:

・Cases where members of the commission were all in favor of the decision of the suits against an appeal/trial decision: six cases
・*Cases where a majority of the commission were in favor of the decision of the suits against an appeal/trial decision while a minority of the commission opposed: one case
・*Cases where the commission was split in half by pros and cons: one case

The report concluded as follows.

“Conclusions of the discussed cases were mostly found to be appropriate. Nevertheless, even where the conclusions were found to be appropriate, there were many who considered that the content of the explanation of determining inventiveness to be unconvincing. The reason for this is mostly due to factors such as inappropriate or insufficient explanation of inventiveness in the appeal/trial decision.
Furthermore, in some of the cases, the reason that inventiveness was denied was due to poor handling on the applicant side or the trial requestor side (e.g., insufficient description in the specification, inappropriate response to an action).”

(2) Investigation/study on overseas systems and practices

Another commission comprising scholars, Supreme Court counselors, lawyers, patent attorneys, and delegates from the industrial world was also organized. The commission conducted (a) comparison regarding systems and practices between Japan, U.S.A, and Europe, (b) hearings with domestic and foreign users, and (c) statistical analysis of examination results among Japan, U.S.A, and Europe.

In (a), in a case of denying inventiveness of an invention by combining multiple prior art, Japan, U.S.A., and Europe all commonly require a “motivation” for combining the prior art. However, in Japan, “motivation” is broadly interpreted to include, for example, close similarity of a problem to be solved, close similarity of the function and operation, and close relation of technical fields and is not necessarily required to be described in the prior art document. On the other hand, in the U.S., judgment is based on the CAFC* decision requiring that TSM (Teaching, Suggestion, Motivation) be described in the prior art document. In Europe, it is required for one skilled in the art to be aware of a problem to be solved regarding for the prior art. Thus, it has been revealed that there are differences at the actual stages of applying the inventiveness criteria in Japan, U.S.A., and Europe.

In (b), hearings were conducted with 42 foreign and domestic top patent assignee companies and major domestic patent firms**. As a result, there were many who had positive opinions regarding the current examination of the JPO which is considered to be stricter in determining inventiveness compared to the U.S. However, it has also been reported that there were quite a few opinions saying that the reasoning for denying inventiveness upon rejection is insufficient.

In (c), examination results for applications filed in Japan, U.S.A., and Europe has been investigated. As a result, although it has been reported that, statistically, the proportion of obtaining rights is slightly higher in the U.S. compared to Japan and Europe, most individual cases show the same results for Japan, U.S.A., and Europe.

The JPO has circulated the above investigation results and expressed its intentions to utilize the results in examination and appeal/trial examination. Furthermore, the JPO has also expressed its intentions to continue the above-described (1) case study of individual cases. Moreover, the JPO has also expressed its intentions to report the results of the above-described (2) investigation/study on international systems and practices at the Trilateral Meeting among the JPO, the USPTO, and the EPO so as to contribute to future talks for achieving international harmonization.

*: As described above, in KSR Int’l Co. vs. Teleflex Inc of April 30, 2007 (after the release of this report), the U.S. Supreme Court found that the current application of the TSM test was too rigid. Thus, attention is drawn to future decisions of the CAFC.
**: Itoh International Patent Office had also cooperated in the above-investigation and hearings.