November, 2014｜News Letter

1. How Effect Represented by Sensory Property "Alcoholic Airy Flavor" should be Treated in Considering Enablement Requirement?JK Sucralose Japan K.K. v. San-Ei Gen F.F.I., Inc., Case No. 2013 (Gyo-Ke) 10271 (Decision rendered on November 10, 2014)

The Patentee, San-Ei Gen F.F.I., obtained a patent relating to a flavor improver for alcoholic beverages in 2004, against which JK Sucralose filed an invalidation trial before the JPO in 2012. The JPO dismissed the JK Sucralose's demand in 2013, followed by a JK Sucralose's appeal against the JPO's decision to the IPHC in 2013.

Claim 1 of the patent at issue claims as follows:
"A flavor improver for alcoholic beverages comprising sucralose".

One of the main issues in this case lied in how an effect represented by a sensory property "alcoholic airy flavor" should be treated in considering the enablement requirement. The IPHC answered to the issue as follows:

First, having reviewed the specification of the patent at issue, the IPHC found (i) that the present invention was to moderate bitterness and a burning sensation caused by an alcoholic beverage while retaining an alcoholic airy flavor by adding sucralose to the beverage to improve the flavor of the beverage, and (ii) that there was a possibility that not only "the bitterness" and the "burning sensation" but also the "alcoholic airy flavor" could be affected when a foreign substance, sucralose, was added to the beverage, and thus (iii) that those skilled in the art needed to confirm if the flavor of the alcoholic beverage could be improved while retaining "alcoholic airy flavor", i.e. without lowering it, by adding sucralose to the beverage when they tried to exploit the invention, and it was essential to clarify the meaning of the term "alcoholic airy flavor" for confirming it. On the basis of the above findings, the IPHC decided (i) that the meaning of "alcoholic airy flavor" was unclear since no specific explanation of the meaning of "alcoholic airy flavor" was found in the specification of the patent at issue, and thus (ii) that the above confirmation was impossible for those skilled in the art, and therefore the specification did not satisfy the enablement requirement regarding the term "alcoholic airy flavor".

Conclusively, the IPHC upheld the Toray'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.

K&P’s CommentsThis decision teaches that it is required to clearly recite the specific meaning or definition even for an effect represented by a sensory property in the specification in order to satisfy the enablement requirement.

In November 2014, the IPHC handed down 19 decisions including the above case on patent and utility model, and overturned previous decisions in 6 cases.

In November 2014, the IPHC handed down 1 decision on trademark, which maintained the previous JPO's decision.