June 26,2020
“Topical Ophthalmic Formulation for Treating Allergic Eye Diseases” Case: A case in which the Supreme Court found that, when determining an inventive step of an invention, an “unpredictable and outstanding effect” should be considered based on whether or not a person skilled in the art could have predicted such effect based on a structure of the invention, but not by comparing it with an effect exhibited by another compound.
【Comments】
- Background
- Filing of a request for patent invalidation trial (MUKOU No.2011-800018) ― (Main points of the Japan Patent Office’s Decision and the IP High Court’s decision in the 1st stage ― omitted)
- JPO’s decision in the 2nd stage (“JPO 2nd decision”) ― (For the invention after claims were corrected by adding “for human” and the like) There is no motivation which could arrive at the invention based on a cited invention, and a person skilled in the art could not have easily conceived of the difference between the invention and a cited invention.
- IP High Court’s decision in the 2nd stage (“IP High Court 2nd decision”) (Case No. 2013 [Gyo-ke] 10058) ― There is the motivation, and a person skilled in the art could have easily conceived of the difference between the invention and the cited invention.
- JPO’s decision in the 3rd stage (“JPO 3rd decision”) ― A person skilled in the art could have easily conceived of the difference between the invention and the cited invention; however, the invention has an “unpredictable and outstanding effect”.
- IP High Court’s decision in the 3rd stage <the original decision> (Case No. 2017 (Gyo-ke) 10003) ― The invention is not found to have the “unpredictable and outstanding effect”.
- Supreme Court’s decision <the present decision> ― The IP High Court did not fully consider the “unpredictable and outstanding effect” of the invention. The original decision was reversed and the case was remanded to the IP High Court for further consideration of said effect.
“The original instance court did not fully consider whether the effect of the invention, in particular the degree of the effect, was unpredictable and outstanding from a viewpoint of whether or not the effect exhibited by a structure of the invention was unpredictable by a person skilled in the art based on the common technical knowledge as of the priority date of the patent in question, or whether or not the effect of the invention was an outstanding effect that exceeded the scope of what a person skilled in the art would expect based on the structure of the invention, and there is no other choice but to consider that the original instance court, assuming that a person skilled in the art could have easily conceived of the idea to apply the present compound to the intended use of the invention, revoked the JPO’s decision by immediately denying the unpredictable and outstanding effect of the invention based only on the fact that other compounds having effects similar to that of the present compound had been known to exist as of the priority date. It should be said that the judgment of the court of original instance erred in the interpretation and application of the law.“
- Issue ① – Comparison target when considering an “unpredictable and outstanding effect”
The point of the Supreme Court’s decision is that, when determining an inventive step, an “unpredictable and outstanding effect” should be considered not by comparing it with an effect exhibited by another compound, but based on whether or not a person skilled in the art could have predicted the effect derived from the compound of the invention at the time of the priority date of the patent in question (from a viewpoint of “whether or not the effect of the invention was an outstanding effect that exceeded the scope of what a person skilled in the art would expect based on the structure of the invention“), and since the court of original instance did not fully consider the effect of the invention from the foregoing viewpoint, the original decision was reversed and the case was remanded to the court of original instance.
- Issue ② – Role of the “unpredictable and outstanding effect” in determining an inventive step (whether or not the binding effect of the former decision regarding the invention may stop the argument of the “unpredictable and outstanding effect” of the invention)
In relation to the invention, the IP High Court 2nd decision which has become final and binding found that “there is a motivation which could arrive at the invention based on a cited invention, and a person skilled in the art could have easily conceived of the difference between the invention and the cited invention”. Based on the binding effect of the IP High Court 2nd decision, the JPO determined in its 3rd decision that there is motivation, and a person skilled in the art could have easily conceived of the difference between the invention and the cited invention; however, the invention has an “outstanding effect”. In the case brought to the IP High Court to revoke the JPO 3rd decision, the IP High Court found in its 3rd decision (the “original decision”) that the invention is not found to have an “unpredictable and outstanding effect”. The Supreme Court, with which an appeal was filed against the original decision, found that since the IP High Court did not fully consider the “unpredictable and outstanding effect” of the invention, the original decision should be reversed and the case be remanded to the IP High Court for further consideration of said effect. From the foregoing facts, the present decision can be understood to have employed the so-called “independent requirement theory” in connection with the role of the “unpredictable and outstanding effect” in determining an inventive step.
With respect to the biding effect of a decision rendered in a case seeking revocation of a trial decision which determines an inventive step of an invention, there are two different views: one is that (i) when the fact that a structure of an invention is easily conceivable was argued, proved, and judged in a case seeking revocation of a trial decision, the binding effect of the decision rendered therein extends to the subsequent proceedings even if an “unpredictable and outstanding effect” of the invention was not argued, proved, and judged; and another is that (ii) even if the fact that a structure of an invention is easily conceivable was disputed and judged, the binding effect does not extend to the subsequent proceedings when an “unpredictable and outstanding effect” was not argued, proved, and judged in a case seeking revocation of a trial decision.
More specifically, according to item (ii) above, unless the “unpredictable and outstanding effect” of the invention was argued, proved, and judged in a previous suit, the invention may be found to have an inventive step even if the court found that the structure of the invention is easily conceivable in a subsequent suit (as in the case of the JPO’s 3rd decision of this case).
Despite the fact that the IP High Court 2nd decision which found that “there is motivation which could arrive at the invention based on a cited invention, and a person skilled in the art could have easily conceived of the difference between the invention and the cited invention” has become final and binding, the original decision judged whether or not the invention has the “unpredictable and outstanding effect”. If such judgment was made based on the foregoing fact, the original decision can be understood to have employed the view stated in the item (ii) above in theory, and the “independent requirement theory” in connection with the role of the “unpredictable and outstanding effect” in determining an inventive step.
However, the Supreme Court decision and the original decision may be understood to have set aside the point that it stands on either (i) or (ii) above.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: h_takaishi@nakapat.gr.jp
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