April, 2014｜News Letter

1. What Kind of Disclosure should be Recognized as Disincentive Factor?

Sanoh Industrial Co., Ltd. v. Usui Kokusai Sangyo Kaisha, Ltd., Case No. 2013 (Gyo-Ke) 10191 (Decision rendered on April 16, 2014)

The Patentee, Usui, obtained a patent relating to a multiple coat metal pipe in 2009, against which Sanoh filed an invalidation trial before the JPO in 2012. The JPO dismissed Sanoh's demand in 2013, followed by Sanoh's appeal against the JPO's decision to the IPHC in 2013.

Claim 1 of the patent at issue claims as follows:
“A multiple coat metal pipe constituted by multiplexing and coating a first layer comprising an polyamide-based resin, polypropylene or polyethylene which has an adhesive force in respect of a surface treatment layer formed on an outer peripheral face of the metal pipe and a primer layer, and which is formed by an extrusion; and a second layer comprising a polyolefin-based resin or a polyamide resin which is formed by an extrusion on an outer peripheral face of the first layer, and which has a chipping resistance,
wherein a peel off strength between the first layer and the second layer is 75 gf/cm or less, and only the second layer is peeled off from the first layer of the multiple coat metal pipe”.

The main issue in this case was what kind of disclosure should be recognized as a disincentive factor. The IPHC answered to the issue as follows.

First, the IPHC found that one of the differences between the claimed invention of the patent at issue and the invention disclosed in prior art reference (p.a.r.) 1 was that the former had a surface treatment layer formed on an outer peripheral face of the metal pipe and a primer layer, while the latter did not have such a surface treatment layer although a primer layer was formed on an outer peripheral face of stainless steel pipe. Further, the IPHC found that the invention disclosed in p.a.r.1 achieved the object of an excellent corrosion resistance and a chipping resistance by forming a resin layer directly on a stainless steel pipe to improve adhesiveness between the pipe and the resin layer, which was clearly supported by the comparison between the working examples in which a resin layer was formed directly on a stainless steel pipe and a comparative example in which a surface treatment layer was formed between a stainless steel pipe and a resin layer.

On the basis of the above findings, the IPHC concluded that a disincentive factor was provided in forming a surface treatment layer between the stainless steel pipe and the resin layer in p.a.r. 1, because forming a surface treatment layer between them meant not to put the stainless steel pipe in direct contact with the resin layer, which denied the object of the invention disclosed in p.a.r. 1, i.e. improving the adhesiveness between the stainless steel pipe and the resin layer.

Conclusively, the IPHC dismissed Sanoh's appeal, and maintained the JPO's decision.

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

K&P’s CommentsUnder the Japanese patent practice, a "disincentive factor" is generally recognized as a positive factor for acknowledging inventive step. This decision provides a typical example of the “disincentive factor”.

In April 2014, the IPHC handed down 17 decisions including the above case on patents and utility models, and overturned previous decisions in 2 cases.

In April 2014, the IPHC handed down no decisions on trademarks.