K&P's Intellectual Property High Court Decision Report in August, 2013

Taiki Co., Ltd. v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10412 (Decision rendered on August 7, 2013)

The Applicant, Taiki, filed a patent application relating to a makeup tip in 2010, but the application was finally rejected on the grounds of lacking inventive step by the Appeal Board of JPO in 2012. Against the JPO's decision, Taiki filed a cancellation action before the IPHC in 2012.

Claim 1 of the patent application at issue claims as follows: "A makeup tip, wherein a top-end portion at the end of an applying part is made linear or planer, and wherein a porous base material which is not a fiber bundle is provided by adhesion or outsert molding at the end of a support".

The main issue in this case was how the difference of use between the product disclosed in a prior art reference and the claimed product should be considered in comparing them.

First, the IPHC found (i) that the eyeliner disclosed in the prior art reference (p.a.r.) 1 was a cosmetic tool having a thin and flat edge only for drawing a linear eyeliner, and (ii) that the makeup tip claimed in the patent application at issue meant a cosmetic tool for planarly or gradationally attaching a cosmetic such as eye shadow to the entire eyelids or a portion of double-edged eyelids, and that it could be also used as an eyeliner.
On the basis of the above findings, the IPHC decided (i) that the main use of the eyeliner disclosed in p.a.r. 1 was different from that of the claimed makeup tip, even though their uses were partially in common, and thus (ii) that the JPO's decision had overlooked the above difference, and the JPO's fact-finding that the eyeliner disclosed in p.a.r. 1 had been the same as the claimed makeup tip was incorrect.
In this connection, during the court proceedings, the JPO asserted that the claims of the patent application at issue did not specify any specific use or method for use. However, the IPHC rejected the JPO's assertion by pointing out that it was clear from the disclosure of the specification of the patent application at issue that the claimed makeup tip meant a cosmetic tool for planarly or gradationally attaching a cosmetic to the entire eyelids or a portion of double-edged eyelids, even though the claims did not recite any specific use or method for use.

Conclusively, the IPHC upheld Taiki'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 would teach that a JPO's fact-finding on comparing a prior art reference and claimed invention may be reversed by arguing any difference of an element of the claimed invention from the prior art reference on the basis of the difference of use between them if the use is clearly understood from the disclosure of the specification.