Update on IP High Court -Trend of Determination on Inventive Step in IP High Court in comparison with the JPO- JPAA International Activities Center Toshifumi.

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Presentation transcript:

Update on IP High Court -Trend of Determination on Inventive Step in IP High Court in comparison with the JPO- JPAA International Activities Center Toshifumi Onuki AIPLA Annual Meeting IP Practice in Japan Committee Pre-Meeting Seminar

Disclaimer The views expressed in this presentation are those of the author and do not necessarily reflect the views of JPAA or the author’s firm. This presentation is for general informational purposes only and should not be taken as legal advice (AIPLA)

 Trend of Determination on Inventive Step -Based on analysis by JPAA Patent Commission- October 21, 2014 Update on IP High Court3

Patentee Success Rate in Invalidation Appeals (Trials) in the Japan Patent Office (JPO) October 21, 2014 Update on IP High Court4 The Dark Age

Applicant Success Rate in Litigations Rescinding Ex parte Trial Decisions from the JPO October 21, 2014 Update on IP High Court5 The Dark Age

Trend of Determination on Inventive Step October 21, 2014 Update on IP High Court6  ： The Dark Ages against pro-patent trend on determination of Inventiveness  Harsh Judgments for Applicants / Patentees  Negating inventiveness based on a well known art without teachings in the prior art (Tokyo High Court, 1997 (Gyo-ke)86) Reference 1 A+B Reference 2 C Invention A+B+C No Inventive Step

October 21, 2014 Update on IP High Court7  ： Turning Period  Moderating the tough level on inventive step Trend of Determination on Inventive Step  Creating a test for weighing motivation to combine the prior art to reach the claimed invention (IP High Court, 2008(Gyo-ke)10096 ） Reference 1 A+B Reference 2 C Invention A+B+C No motivation to Combine In Reference 1 or 2

How to Evaluate Inventiveness October 21, 2014 Update on IP High Court8 Part 1 Part 2

How to Evaluate Inventiveness (part 1) October 21, 2014 Update on IP High Court9 YES

Determining the Scope of the Claimed Invention (Step 1) October 21, 2014 Update on IP High Court10  Patent Office  Tends to determine the scope of the claimed invention without reference to the description of the specification  IP High Court  Tends to interpret the meaning of the claim terms with reference to the description of the specification (2007(Gyo-ke)10389, 2008 (Gyo- ke) 10338)

How to Evaluate Inventiveness (part 1) October 21, 2014 Update on IP High Court11

Determining the Scope of the Prior Art Invention (Step 2) October 21, 2014 Update on IP High Court12  Patent Office  Tends to broadly determine the scope of the prior art invention with reference to the common knowledge in addition to the disclosure in the prior art  IP High Court  Tends to narrowly determine the scope of the prior art invention with the emphasis on relation between problems to be solved and means for solving the problems (2010(Gyo-ke)10407, 2010(Gyo-ke)10405 ）

How to Evaluate Inventiveness (part 2) October 21, 2014 Update on IP High Court13

Well-known Art (Step 5) October 21, 2014 Update on IP High Court14  Patent Office  Tends to negate inventive step on combining the prior art with the well-known art through abstract determination on: (i)the structure of the well-known art, (ii)the scope of the well-known art, and (iii) the technical field of the prior art  IP High Court  Tends to affirm inventive step through concretely and minutely determining the above (i)-(iii) and judging as to whether there is any motivation to combine the inventions (2008(Gyo-ke) 10209, 2011(Gyo-ke) ）

How to Evaluate Inventiveness (part 2) October 21, 2014 Update on IP High Court15

Teaching Away (Step 7) October 21, 2014 Update on IP High Court16  Patent Office  Tends to broadly determine the scope of the prior art invention through abstract determination on: (i) the meaning of the prior invention, (ii) its concrete structure, (iii) operation, (iv)purpose/problems, (v)preconditions, (vi)the prior art to the prior invention, (vii)the common knowledge of filing date, and (viii)determination of differences  IP High Court  Tends to affirm inventive step by minutely and concretely determining the above (i)-(viii) and finding teachings away from the claim to affirm inventive step (2011(Gyo-ke)10022, 2008(Gyo-ke)10431)

How to Evaluate Inventiveness (part 2) October 21, 2014 Update on IP High Court17

Design Choice (Step 8) October 21, 2014 Update on IP High Court18  Patent Office  Tends to broadly determine through abstract finding: (i)claimed invention, (ii)purpose in claimed invention for adopting its specific structure, and (iii) purpose in claimed invention for adopting its specific structure, determine differences between the claimed invention and the prior invention as a design choice to negate inventive step  IP High Court  Tends to affirm inventive step by minutely and concretely determining the above (i)-(iii) and finding the difference not design choice to affirm inventive step (2011(Gyo- ke)10171, 2009(Gyo-ke)10289)

How to Evaluate Inventiveness (part 2) October 21, 2014 Update on IP High Court19

Analogy in Technical Field (Step 6-1) October 21, 2014 Update on IP High Court20  Patent Office  Tends to jump to a conclusion that the prior art combinable without considering it or interpreting the technical field broadly  IP High Court  Tends to interpret the technical field narrowly:  Affirming inventive step even though the prior art is in the same technical field if there are some differences in problems to be solved, means for solving the problems, operations/functions, or technical ideas (2010(Gyo-ke)10345, 2008(Gyo-ke)10305 ）  Affirming inventive step when the technical fields are different (2011(Gyo-ke)10021, 2010(Gyo-ke)10298)

How to Evaluate Inventiveness (part 2) October 21, 2014 Update on IP High Court21

Analogy in Problems to be Solved (Step 6-2) October 21, 2014 Update on IP High Court22  Patent Office  Tends to negate inventive step by combining the prior art without looking at the problems to be solved  IP High Court  Tends to affirm inventive step focusing on differences in problems to be solved (2011(Gyo-ke) 0214, 2008(Gyo-ke)10305)

How to Evaluate Inventiveness (part 2) October 21, 2014 Update on IP High Court23

Analogy in Operations/Functions (Step 6-3) October 21, 2014 Update on IP High Court24  Patent Office  Tends to negate inventive step by merely combining teachings in the prior art without considering operations or functions  IP High Court  Tends to value operations or functions in association with problems to be solved and technical ideas (2011(Gyo-ke) 10269, 2010(Gyo- ke)10405)

How to Evaluate Inventiveness (part 2) October 21, 2014 Update on IP High Court25

Teachings in the Prior Art (Step 6-4) -Combination- October 21, 2014 Update on IP High Court26  Patent Office  Tends to determine replacing the primary reference with the secondary one as it could have easily been thought of where technical fields or operations are analogous  IP High Court  Tends to affirm inventive step unless the prior art teaches suggestions or motivations to replace the element (2011(Gyo-ke)10022, 2010(Gyo-ke)10021)

Teachings in the Prior Art (Step 6-4) -Analogy in Technical Field- October 21, 2014 Update on IP High Court27  Patent Office  Tends to determine a technical field of the prior art the same where the technical field is the same in a broader concept  IP High Court  Tends to affirm inventive step where the technical fields are different in a strict meaning even if the same in the broader concept (2010(Gyo-ke)10237, 2009(Gyo- ke)10330)

Teachings in the Prior Art (Step 6-4) -Numerical Limitations- October 21, 2014 Update on IP High Court28  Patent Office  Tends to regard choices in numerical ranges as mere a design choice without teachings in the prior art  IP High Court  Tends to affirm inventive step unless the numerical range is commonly used without teaching of the technical idea for the numerical limitation (2008(Gyo-ke)10300, 2009(Gyo-ke)10134)

Trend of Determination on Inventive Step Add-up October 21, 2014 Update on IP High Court29  Determination level on inventive step has been moderated recently in both the JPO and IP High Court  IP High Court tends to take a more generous approach for determination on inventive step than the JPO Inventive Crane No Inventive Zone

Any Questions? Thank you for your kind attention Toshifumi Onuki TMI Associates October 21, 2014 Update on IP High Court30

 Statistics October 21, 2014 Update on IP High Court31

Litigations Rescinding Trial Decisions from the JPO Ex parte cases vs. Inter parte cases October 21, 2014 Ex parte Inter parte Update on IP High Court About 60% About 40%

Litigations Rescinding Inter Parte Trial Decisions Annual Case Transition October 21, Other reasons Inventive Step Update on IP High Court33

Litigations Rescinding Ex Parte Trial Decisions Annual Case Transition October 21, Update on IP High Court34 Other reasons Inventive Step

Litigations Rescinding Inter Parte Trial Decisions Favorable Rate for Patentees October 21, 2014 Adverse to patentees Favorable to patentees Update on IP High Court JPO’s invalidation decision dismissed by IP High Court JPO’s validation decision rescinded by IP High Court JPO’s invalidation decision rescinded by IP High Court JPO’s validation decision dismissed by IP High Court

Litigations Rescinding Ex Parte Trial Decisions Favorable Rate for Applicants October 21, 2014 Update on IP High Court Adverse to applicants Favorable to applicants

Litigations Rescinding Inter Parte Trial Decisions Favorable Rate per IP Division October 21, Update on IP High Court37 1 st Div. 2 nd Div. 3 rd Div. 4 th Div.

Summary October 21, 2014 Update on IP High Court38  Appeal cases from Decisions by the JPO  About 60% of the cases are Ex parte litigations  About 40% of the cases are Inter parte litigations  Rate has remained steadily  Favorable Litigation Rate for Patent/Application Owners  Litigations Rescinding Ex Parte Trial Decisions  Fluctuated from 17% to 40% between Divisions in IP High Court  Around 24% Average in 2013  Litigations Rescinding Inter Parte Trial Decisions  Fluctuated from 61% to 71% between Divisions in IP High Court  Around 65% Average in 2013