July, 2014｜News Letter

1. How the Sameness of Invention should be Determined?

Kumiai Chemical Industry Co., Ltd. v. Commissioner of JPO, Case No. 2013 (Gyo-Ke) 10291 (Decision rendered on July 16, 2014)

The Applicant, Kumiai, filed a patent application relating to a solid agricultural chemicals composition in 2001, but the application was finally rejected on the grounds of the same invention as that disclosed in a prior application by the Appeal Board of JPO in 2013. Against the JPO's decision, Kumiai filed a cancellation action before the IPHC in 2013.

Claim 1 of the patent application at issue claims as follows: “A solid agricultural chemicals composition for paddy field, comprising: a fragment of a fiber crop having a high oil absorbency selected from (snip) kenaf, (snip); and a liquid agrochemically active ingredient at room temperature or a liquid matter prepared by dissolving or dispersing an agrochemically active ingredient in a liquid solvent”.

One of the main issues in this case was how the sameness of an invention should be determined. The IPHC answered to the issue as follows:

In the JPO’s decision, the JPO first found that one of the prima-facie differences between the present invention and the invention disclosed in the prior application (p.a.) was that the former specified that the agrochemically active ingredient was contained in the form of a liquid matter prepared by dissolving or dispersing an agrochemically active ingredient in a liquid solvent, while the latter did not specify such a form, and then found that Example 4 of the p.a. demonstrated that 4 agrochemically active ingredients were mixed with kenaf and then with rapeseed oil to prepare an agricultural chemicals composition. On the basis of the above findings, the JPO concluded that it was presumed that rapeseed oil substantially acted as a liquid solvent, and thus the agrochemically active ingredients were contained in the composition as a form of a liquid matter in which the agrochemically active ingredients were dissolved or dispersed in rapeseed oil, and therefore the above prima-facie difference was not substantial.

However, the IPHC denied the above JPO’s conclusion, and found that Example 4 of the p.a. further specifically demonstrated that 21.4 wt.% of 4 agrochemically active ingredients were mixed with 10 wt.% of kenaf to prepare a bulk powder and then the bulk powder was mixed with 29.1 wt.% of calcined floatstone in which 6.0 wt.% of rapeseed oil had been sufficiently immersed in advance. On the basis of the above finding, the IPHC concluded (i) that it was doubtful if rapeseed oil could act as a liquid solvent since the amount of rapeseed was very small, (ii) that it was also doubtful if the rapeseed oil immersed in the calcined floatstone still maintained the wettability sufficient to act to dissolve the agrochemically active ingredients, and (iii) therefore that it could not be said that the rapeseed oil acted as a liquid solvent in Example 4 of the p.a.

Conclusively, the IPHC upheld Kumiai’s appeal, and cancelled the JPO's decision.

It could not be confirmed whether or not an appeal to the Supreme Court was filed against this decision so far.

K&P’s CommentsUnder Article 29bis of the Japanese Patent Law, a claimed invention is not allowed if it is disclosed in an application (p.a.) which was filed before the filing date of the claimed invention and published after the filing date of the claimed invention, which is similar to the EPC 54(3).
As seen from the above decision, in order to acknowledge that the claimed invention is the same invention as that disclosed in a prior application, it would be required to show that not only each element of the claimed invention is just formally described in a p.a., but also such element acts in the same way.

In July 2014, the IPHC handed down 17 decisions including the above case on patents and utility models, and (partially) overturned previous decisions in 8 cases.

Meanwhile, regarding “Honeywell International., Inc. v. Asahi Glass Co., Ltd., Case No. 2013 (Gyo-Ke) 10218 (Decision rendered on June 26, 2014)” presented in our last report, we confirmed that an appeal to the Supreme Court was FILED against the decision, and thus the decision is not final and binding.

Additionally, we have now confirmed that the appeal to the Supreme Court against the decision on Case No. 2012 (Gyo-Ke) 10207 (Ryoto Chemical Industry Co., Ltd. v. Ube Industries, Ltd. et al.), which we introduced in the K&P’s IPHC Decision Report in July 2013 was dismissed on May 19, 2014.

In July 2014, the IPHC handed down 3 decisions on trademarks, all of which overturned the previous decisions.