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FPB Circular No. 12-01 October 2012

JAPANESE IP HIGH COURT TAUGHT DIFFERENT WAYS FROM CURRENT JPO'S INVENTIVE-STEP DETERMINATION MANNER

Preface
The current JPO's Examination Manual includes such an inventive-step determination standard that guides the Examiner to determine existence of an inventive step by making sure of motivation for conceiving a claimed invention while referring to a problem to be solved (i.e. an object to be accomplished) by the claimed invention or other factors, and further referring to whether or not a specific claimed structure has been readily adopted by a person skilled in the art in view of the motivation.
However, the current JPO's inventive-step determination standard allows the Examiner to disregard the problem to be solved and to look only at a claimed structure while taking into account an advantageous effect resulted from the structure, thereby making it easy to deny an inventive-step.
In practice, the JPO Examiner in many cases ignore the problem to be solved by the claimed invention in determination of existence of an inventive-step within the claimed invention while merely looking for any synergism among elements of the claimed structure or any advantage of the claimed invention against the prior art.
It is however to be noted that Art. 29(2) of Japanese Patent Law stipulates only non-readily conceivability of an invention as a patentability requirement but does not require any advantage of the invention against the prior art as a patentability requirement.
It therefore seems that the JPO believes to be true such a presumption that an invention causing any advantageous effect against the prior art must be non-readily conceivable. It is however apparent that such presumption is not always true.
History of Revisions of JPO Examination Manual
2-1) Formulation of Uniform Examination Manual
In 1993, the JPO published a unified patent/UM Examination manual in place of many pieces of previous Examination manuals covering respective technical fields. The uniform Examination manuals included an inventive-step determination standard which placed a heavy weight on a logical reasoning how easy for a person skilled in the art to conceive a claimed invention from the prior art in order to prove the inventive-step, while placing a less weight on an advantageous effect caused by the claimed invention. In 1994, amendments were made to the Japanese Patent Law such that 'effect of invention' is eliminated from the legal disclosure requirement and disclosure of 'effect of invention' is recommended merely by the Rules.
After the introduction of the uniform Examination manual, it seems that serious arguments had been made in the JPO with respect to practical difficulty for the Examiner to formulate such logical reasoning without referring to the 'effect of invention'.
2-2) Revision of the Standard
In 2000, the inventive-step determination standard was largely revised to make it easy for the Examiner to formulate a logical reasoning in proving lack of inventive-step by allowing evaluation of a claimed structure while ignoring a problem to be solved by, for example, saying that the claimed structure is readily implemented merely by 'choice of design' Such revision seems to be a revival of the old practice before 1993 in which 'effect of invention' is so important for the inventive-step assessment.
Recent IP High Court Decisions
The IP High Court decided H22 (Gyou-ke) 10075 on January 31, 2011 so as to reverse a JPO's invalidation decision which invalidated a patent. The Court decision taught that the JPO must decide validity of a patent while taking into account whether or not a skilled person could have readily established the problem (function, effect, etc.) as well as whether or not the skilled person could have readily adopted the claimed structure so as to solve the particular problem.
In other words, it is not sufficient to merely take into account whether or not such claimed structure could have been readily adopted but must take into account easiness in finding the problem itself. When the problem itself is unique, it is generally difficult to determine that the claimed invention could have been readily conceived.
The IP High Court decided H20 (Gyou-ke) 10096 on January 28, 2009 so as to cancel a JPO's decision of rejection which rejected a patent application in an Appeal trial.
In that decision, the IP High Court taught that assessment of an inventive-step must be made while taking into account an object or a problem to be solved of a claimed invention thereby to avoid a hindsight or an illogical consideration in determining difficulty for a skilled person to conceive the claimed invention.
Conclusions
4-1) The Applicant of a Japanese patent application should clearly state in the description a problem to be solved by a claimed invention.
4-2) The Applicant should make sure that the Examiner has surely taken into account whether the problem to be solved is unique or not when the Examiner has rejected a claimed invention in, for example, a notice of rejection because the claimed invention lacks any inventive-step.
4-3) The JPO must revise the inventive-step determination standard so as to make clear that the particular determination must be made not only on the basis of how easy for any skilled person to adopt such claimed structure so as to solve the problem but also how easy for that person to establish such specific problem or object itself.
4-4) The JPO must revise the inventive-step determination standard so as to make clear that existence of the inventive-step must be determined by assessing easiness in conceiving a claimed invention while firstly grasping a problem to be solved by the claimed invention.
Specific Advice to Foreign Applicants
In view of our experiences in prosecuting patent applications before the JPO, we are careful not to insist advantageous effect at any time even for persuading existence of an inventive-step. The Examiner still has such tendency to neglect the problem to be solved and look only at the advantage of a claimed invention in determining an inventive-step.
It can be said that the IP High Court decisions mentioned above have suggested or taught that a heavier weight must be placed on an object but not on a result or advantageous effect of a clamed invention for assessing the inventive-step of the claimed invention.
You therefore, for the time being, need not make any change in your practice to instruct your Japanese associate how to cope with a notice of rejection in a usual case. However, you can expect that the JPO's practice in determining an inventive-step will change in near future thereby to place a heavier weight on the problem to be solved by a claimed invention (including determination of newness or uniqueness of the problem) in determining existence of an inventive-step in the claimed invention.

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