Understanding The Differences Between The Trilateral Patent Offices In Determining Inventive Step

In the U.S., U.S. Patent Law 103 “stipulates the non-easiness of the invention” as the “Unobviousness”. The European Patent Office (EPO) stipulates it under EPC article 56 as “inventive step”. In Japan, Japanese Patent Law stipulates it in the same way as the EPO under Section 2 of Article 29 of the Patents Law as “inventive step”. Considering China and South Korea, both also define it as “inventive step” in the patent law.

Literally, the meaning of “Unobviousness” is if the invention is not easy to be configured, it is patented. On the other hand, the meaning of “Inventive step” is the necessity to be inventive to be patented. Therefore, from the definition’s literal meaning, there is the possibility that the hurdle in the United States may be lower than in Japan and EPO.

However, the hurdle for unobviousness and inventive step can be set from the viewpoint of a country’s industrial policy and in the examination practice of each country’s patent office.

In the past, it was said that the hurdle of the JPO’s examination was the highest among the trilateral PTOs. Therefore even if a patent application was rejected by JPO, there was the possibility of a corresponding patent application being granted in the U.S..

However, in recent years, due to the influence of the so-called “KSR decision” by the US court, it is possible that the hurdle of the “unobviousness” in the USPTO’s examination has become higher than the of JPO. As a result, the general patent rate in Japan is announced to be 70%, with the rates in the United States and Europe both being around 50%. This information is based on the JPO’s website.

When a refusal notification is issued on lack of inventive step in a JPO patent examination, I think that “asserting the remarkable effect of the invention by comparing the cited references” is be the best way to overcome the rejection. However, in the case of the United States, this method is likely not effective. In US practice, it is necessary to assert “differences in constitution between cited references”.

On the other hand, in Japan, so-called “secondary considerations” such as “commercial success of the inventions” as used in US practice, are basically ineffective. In the case of the Europe (EPO), the inventive step is judged by a unique method called the Problem-Solution Approach. This method is different from the JPO and the USPTO.

Therefore, it is not effective for patent attorneys in Japan, the United States and Europe to argue with the PTO’s of other countries based on the logic of inventive step in their own countries.

It should also be noted that the method of studying and determining the inventive step is different in each country of the Trilateral Offices. This point will be discussed in greater detail in future articles: my purpose here was to simply introduce it.

By Takaaki Kimura

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