Being Aware Of How Inventive Step Is Determined In Japan. Part 2

Various discussions have been offered by practitioners and scholars about the inventive step, but a key point is whether or not the difference from conventional patents or the prior art is large qualitatively or quantitatively.

The way the patent examination practice of JPO studies and the determines the difference, is “Whether is it difficult to configure the invention referring to the cited prior art references or not”. Therefore, “the difficulty of the configuration” is the essence of the inventive step.

An element of judging the existence of “the difficulty of the configuration” in the invention is if the issue of “whether there is a remarkable effect that cannot be achieved by the conventional invention” is examined or not. This is one, but perhaps the most substantive way of thinking by the JPO.

The patent system is designed to patent only the inventions that contribute to technological progress and industrial development of the country. This is the same for the patent system of any country.

Basically, the invention is specified by three elements: i.e. “Problem of the prior art”, “Configuration of the idea”, and “Effect”. “Problem” is the cause of the invention, “Effect” is the result of the invention. “Configuration” is the main body of the invention.

“Presence or absence of novelty” is basically a matter of “Configuration”. “Inventive step” is examined on the premise that there is novelty, taking into consideration the problems and effects of the invention from the prior art.

The effect is “how the invention can contribute to the society and economy by solving prior problems and providing benefits”. The idea of granting patents to those with a large degree of contribution is the same in all countries.

“Novelty”, which is a more basic patent requirement than inventive step, is basically the hurdle of “whether or not the conventional technology and the invention are the same”. When it is completely the same as the conventional technology it is judged that there is no novelty. Therefore, it is a “digital” hurdle of “all or nothing” of ” whether or not it is applicable”.

On the other hand, the judgment of inventive step is “The invention has novelty, but it is necessary for the invention to have enough difference from the prior art to grant a patent”. The hurdle of “the distance and the difference between the prior art” of the invention is not unambiguously clear, and in that sense it is a concept with a very “analog” meaning.

As a result, relating to the test of the inventive step, a variety of ideas and discussions have been made by patent practitioners and scholars. Therefore, the notice of reasons for refusal on inventive step almost always concerns patent attorneys. Regardless, the most common reasons for refusal are due to a lack of inventive step. Therefore, “inventive step” can be said to be an eternally annoying issue for the applicant and patent practitioners.

A frustration is that there are subtleties in determining inventive step. If it can be proven that there is an overwhelming difference from the prior art or “a big invention” that can exert an overwhelming effect that has never existed before, the inventive step is surely recognized by the PTO or Court. However, generally, many inventions are not like “big inventions” and have no prior art or so called “improved invention” improving the prior art. This is the same in every PTO.

Therefore, sometimes, many patent practitioners including me have to fight against PTO examiners on “small inventions” or “improved inventions” in rather bitter battles.

In the course of studying and making decisions on inventive step, the examiner’s technical sense and social view, more specifically whether they have positive basic feelings about the invention, whether they are of negative or positive character, etc. all also become involved. In addition, and as a matter of course, the height of the hurdle for inventive step is different across technical fields as well.

Furthermore, within the JPO, even if the inventive step is denied in the examination stage, there is the possibility that it may be admitted in the appeal stage. In some cases, even if the patent office does not recognize the inventive step, the court may recognize it. Thus inventive step determination includes a wide variety of variables: it is subtle judgment.

Therefore, the JPO has established and published “Patent Examination Standards” which are open to the public so that this judgment will not be arbitrary, and are used as a guideline for examiners to judge the inventive step. However, it should be noted that the inventive step determination variables as described above are still present.

Finally, when discussing inventive step, it is necessary to consider all of the above variable factors. As initially mentioned, in the JPO examination of patents, somehow “the remarkable effects in comparison with the conventional art” is to be studied initially.

The JPO’s examinations of the difference of the configuration of the invention to the cited references, as compared to how they are done in US patent practice, is not appropriate.

By Takaaki Kimura

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