September, 2014｜News Letter

1. Interpretation of "Use" InventionBayer CropScience LP v. Commissioner of JPO, Case No. 2013 (Gyo-Ke) 10255 (Decision rendered on September 24, 2014)

The Applicant, Bayer CropScience, filed a patent application relating to a method for improving turfgrass quality in 2005, but the application was finally rejected on the grounds of lacking novelty and inventive step by the Appeal Board of JPO in 2013. Against the JPO's decision, Bayer filed a cancellation action before the IPHC in 2013.

Claim 1 of the patent application at issue claims as follows:
"A method of using phthalocyanine for improving the density, uniformity and greenness of turfgrass comprising applying an effective amount of a composition containing a copper phthalocyanine to the turfgrass, with the proviso that … <snip>".

The main issues in this case lied in the interpretation of "use" invention, specifically (1) whether or not it is required to define the invention with any specific claim format for the "use" invention, and (2) whether or not the "use" invention which is not distinguished from the cited prior art in the implementation means can be admitted as a novel invention. The IPHC answered to the issues as follows:

First, the IPHC found that the technical meaning of the claimed invention of the patent application at issue was different from that of the invention disclosed in prior art reference (p.a.r.) 1 in that the former was to use phthalocyanine for improving the density, uniformity and greenness of turfgrass as claimed, while the latter was to spray on turfgrass a colorant for turfgrass containing pigments, for example, copper phthalocyanine, for coloring turfgrass uniformly in green. On the basis of the above finding, the IPHC construed that the expression "for improving the density, uniformity and greenness of turfgrass" in the claim at issue should be interpreted as an element specifying the use of the invention at issue, and presented a principle that the use invention should have novelty if the use was the one based on the finding of an unknown attribute of copper phthalocyanine and it was to provide a new use, even though the means for applying an effective amount of a composition containing copper phthalocyanine to turfgrass was the same.
On the basis of the principle, the IPHC further examined the case and decided that the claimed use invention at issue was NOT the same invention as the invention disclosed in p.a.r 1 on the grounds that the phenomena and the mechanism of a growth adjusting agent, which corresponded to the claimed use invention at issue, were far different from those of a colorant, which corresponded to the invention disclosed in p.a.r 1, and that (i) the growth adjusting agent fell into the category of agrochemicals, while the colorant did not, (ii) the growth adjusting agent and the colorant were classified in a different group in the literature, (iii) the growth adjusting agent and the colorant were separately sold as commercial products, and (iv) the use of season was also different between the growth adjusting agent, which was used in the growing season of turfgrass, and the colorant, which was used in the dormant season of turfgrass.

In this connection, during the court proceedings, the JPO asserted that in order to construe the claimed invention as "use" invention, the claim format should be defined by a specific use invention format, such as "[a] method of improvement of the density, uniformity and greenness of turfgrass, comprising using … ", "[a]n improving agent for the density, uniformity and greenness of turfgrass, comprising phthalocyanine … ", or the like, and the expression of the claimed invention just showed the effect of the invention. However, the IPHC rejected the JPO's assertion by pointing out that the expression "for improving the density, uniformity and greenness of turfgrass" should be interpreted as specifying the use, as stated above, and there was no reason why the use invention should have the expression as the JPO exemplified.

Conclusively, the IPHC upheld the Bayer'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 final and binding. Thereby, the case was remanded to the Appeal Board of the JPO, and the Board granted a patent.

Bayer's in this case was represented by us, KAWAGUTI & PARTNERS.

K&P’s CommentsAs seen from the above, this decision teaches (i) that in order to construe the claimed invention as "use" invention, it is not required to define the invention with any specific claim format, but "use" claim is acceptable insofar as any specific "use" is substantially defined in the claim, and (ii) that even though the implementation means is not distinguished between the claimed "use" invention and the invention disclosed in a p.a.r., the "use" claim can be novel if you can demonstrate that the use is the one based on the finding of an unknown attribute and it is to provide a new use which is substantially different from the invention disclosed in a p.a.r. by showing, for example, the difference of the phenomena and the mechanism, the difference of classification in the literature and/or the market, the difference of the time of use, and the like.

In September 2014, the IPHC handed down 32 decisions including the above case on patent, and overturned previous decisions in 11 cases.

Meanwhile, we have now confirmed that the appeal to the Supreme Court against the decision on Case No. 2013 (Gyo-Ke) 10172 (JK Sucralose Japan v. San-Ei Gen F.F.I., Inc.), which we introduced in the K&P's IPHC Decision Report in March 2014, was dismissed on July 11, 2014.

In September 2014, the IPHC handed down 2 decisions on trademarks, all of which maintained the previous decisions.