K&P's Intellectual Property High Court Decision Report in July, 2012

ISIS v. Commissioner of JPO, Case No. 2011 (Gyo-Ke) 10354 (Decision rendered on July 12, 2012)

The Applicant, ISIS filed a patent application relating to an electrolytic apparatus in 2004, but the application was finally rejected on the ground of lacking novelty by the Appeal Board of JPO in 2011. ISIS filed a cancellation action against the JPO's decision before the IPHC in 2011.

Claim 1 of the patent application in issue claims as follows:

"An electrolytic apparatus having no diaphragm, wherein the current density between the electrodes is set at 2 mA/mm² or higher and the flow rate of the water to be treated is fixed at 0.3 mm³/mA-sec or higher".

The main issue in this case was whether or not the technical meaning of the numerical limitation and the advantageous effect brought about thereby should have been considered when the novelty was examined. The IPHC answered to the issue as follows.

The IPHC found that the prior art reference (p.a.r.) disclosed an electrolytic apparatus having no diaphragm, wherein the current density between the electrodes was higher than 2 mA/mm² and the flow rate of the water to be treated was 0.5 x 10³ mm³/mA-sec. On the basis of this finding, the IPHC decided that all the technical features of the claimed apparatus conform with those of the apparatus disclosed in the p.a.r., and denied the novelty.

In this connection, the Applicant asserted during the court proceedings that the JPO just compared the numerical values and did not consider the technical meaning of the numerical limitation and the advantageous effect brought about thereby at all in spite of the fact that (i) the flow rate disclosed in the p.a.r. was more than 100 times higher than the lower limit of the claimed flow rate and that (ii) the p.a.r. only showed the experimental conditions for the electrolytic apparatus and did not disclose the effect of the apparatus.
However, the IPHC rejected the Applicant's assertion on grounds that it was enough to destroy the novelty that the prior art reference disclosed the invention to the extent that those skilled in the art could carry it out without special consideration and that there was no need to disclose the object or the effect of the invention.

Conclusively, the IPHC dismissed the Applicant's appeal and upheld the JPO's decision.

An appeal to the Supreme Court was filed against this decision, and thus the decision is not final and binding.

This decision upholds the JPO's current practice in determining the novelty. Namely, the technical meaning and the advantageous effect of the claimed inventions are not considered in determining the novelty.

Art Lab. Co., Ltd. v. Fuji Boeki Co., Ltd., Case No. 2011 (Gyo-Ke) 10389 (Decision rendered on July 25, 2012)

Art Lab., obtained a utility model right relating to a device for fragrance in 2007, against which Fuji Boeki filed an invalidation trial before the JPO in 2011. The JPO accepted Fuji's demand and made a decision of invalidation in 2011, followed by Art Lab.'s appeal against the JPO's decision to the IPHC in 2011.

Claim 1 of the utility model right in issue claims as follows:

"An indoor device (10) for fragrance comprising a) an container (11) containing a liquid fragrance (12) and having an opening (11a) at the top of the container (11), b) an artificial flower (13b) made by bark of sola arranged over the opening (11a) and c) a permeable string (13a) arranged in the liquid fragrance (12) at a lower end and connected to the artificial flower (13b) at an upper portion".
(Please refer to Fig. 1 shown below)

The main issue in this case was what constituted the disincentive factor in examining the inventive step. The IPHC answered to the issue as follows.

First, the IPHC found that one of the differences between the present invention and the prior art invention (p.a.i.) was that the artificial flower (13b) in the former was made by bark of sola, while the artificial flower in the latter comprised an attachment to an artificial flower center, such as artificial stamens (5), artificial petals (6) and artificial sepals (7) (see Fig. 2 shown below). Further, the IPHC considered the difference and found (i) that the liquid fragrance (12) in the present invention evaporated from the entire flower (13b) made by bark of sola, while the fragrance (3) in the p.a.i. evaporated only from the transpiration tube (1) and not from the flower, and thus the flower (13b) of the present invention was functionally different from the flower of the p.a.i. from which the fragrance (3) did not evaporate; (ii) that the upper end of the transpiration tube (1) in the p.a.i. was sleaved and the fragrance (3) evaporated only from the sleaved portion, and thus the technical concept of the present invention that the fragrance evaporated from the entire flower did not exist in the p.a.i.; and (iii) that the transpiration tube (1) in the p.a.i. was arranged so as not to contact with petals (6) and the like in order to avoid adhesion of the fragrance (3) in the tube (1) to the petals (6) and the like when the tube (1) was removed.
On the basis of the above findings, the IPHC decided that the transpiration of the fragrance (3) from the entire flower was denied in the p.a.i., which in turn constituted a disincentive factor against applying to the flower of the p.a.i. a flower made by bark of sola transpiring the fragrance from the entire flower.

Conclusively, the IPHC upheld Art Lab.'s appeal and cancelled the JPO's decision.

An appeal to the Supreme Court was not filed against this decision, and thus the decision is now final and binding.

This decision provides an example of a "disincentive factor", which is one positive factor for acknowledging inventive step in Japan. Even though a prior art document does not clearly mention any negative factor, it can constitute a disincentive factor.