Being Aware Of How Inventive Step Is Determined In Japan. Part 1

Inventive step is the most formidable hurdle among patent registration requirements. Many applicants struggle to overcome this hurdle, and it is the most common reason for rejecting patents by patent examiners in Patent Offices. This being among the main “reasons for refusal” generated by the PTO’s around the world, brings many patent attorneys to tears.

In Japan, the reason for rejection is that the criteria for judging inventive step may differ slightly depending on the examiner of the JPO (Japan Patent Office). The standard applied when judging whether or not there is inventive step also differs depending on the technical field. Furthermore, if the judgments are different within the JPO (between the examination department and the appeal department), the judgments may indeed be different between the JPO and the court.

Novelty is a “digital” concept of all-or-nothing that can be concluded uniquely, but inventive step is a fairly “analog” concept that is sometime difficult to understand.

Inventive step exists in the patent requirements of each country, but the idea of inventive step differs among each country, especially in the JPO, USPTO (the United States Patent Trademark Office), and the EPO (European Patent Office). These are known as the “Trilateral Patent Offices “.

In the law of every country, inventive step is stipulated after the article of novelty: the order of examination is to judge novelty first and then inventive step. That is, as a general rule, in patent examinations, the determination of the presence or absence of inventive step is performed on the premise that there is novelty. First, let us consider the concept of inventive step in Japan.

In JPO patent practices, identifying the conclusion, the remarkable effect compared to the prior art is proven. Thus, the Patent Office and the court admit the invention has the inventive step. There are various other approaches to clearing the inventive step hurdle, but this is the royal road in Japanese Patent Practice.

Therefore, if you wish to obtain a patent in Japan, it is necessary to logically assert and prove that “the present invention can achieve remarkable advantageous effects that cannot be achieved by conventional art.” The effect in this case is basically a technical effect, but an economic effect (ex: cost reduction) and the like are also acceptable.

However, it is desirable that the above effects are described in the application specification filed. If an effect not stated in the application specification filed, is later asserted in a written opinion, it may not be recognized by the JPO or the court.

By Takaaki Kimura

Managing Partner and Patent Attorney with over thirty-five years of IP law experience.