December, 2015｜News Letter

1. How should Motivation be considered in Examining Inventive Step?Synthes USA v. Commissioner of JPO, Case No. 2015 (Gyo-Ke) 10042 (Decision rendered on December 10, 2015)

The Applicant, Synthes, filed a patent application relating to a flexible bone composite in 2005, however, the application was finally rejected in 2014 by the Appeal Board of the JPO on the grounds of lacking inventive step. Against the JPO's decision, Synthes filed a cancellation action with the IPHC in 2015.

Claim 1 of the Synthes's patent application at issue claims as follows:
A flexible bone composite comprising:
(a) a first polymeric layer comprising a synthetic resorbable polymer, having a first side and a second side, … ; and
(b) a first calcium-containing layer being attached chemically, physically, or both to the first side of the polymeric layer and comprising granules of a calcium compound,
wherein the first calcium-containing layer is substantially free of polymers, and most of the outer surface of the granules are not covered with polymers.

One of the main issues in this case lied in how a motivation should be considered in examining inventive step. The IPHC answered to the issue as follows:

Having reviewed prior art reference (p.a.r.) 1, the IPHC first found that there was a difference between the patent application at issue and the invention disclosed in p.a.r. 1 in that the former specified that "the first calcium-containing layer is substantially free of polymers, and most of the outer surface of the granules is not covered with polymers", while the latter specified that a portion of particles were fixed at a state of being exposed. Regarding the difference, the IPHC further interpreted that "most of the outer surface of the granules are not covered with polymers" meant that not all but at least half or more of outer surface of each granule was not covered with polymers, thus the above difference was substantially a difference in degree of exposure, that is, the degree of exposure in the patent application at issue was greater than that in the invention disclosed in p.a.r. 1. On the basis of the above interpretation of the difference, the IPHC decided that the difference was not easily conceivable from p.a.r. 1 on the grounds (i) that no specific description or even suggestion was found on the degree of exposure of particles in p.a. r. 1, thus p.a.r. 1 did not show that the greater degree of exposure was preferable, and (ii) that there was no evidence showing that it had been common technical knowledge that the greater degree of exposure had been preferable, thus there was no motivation to increase the degree of exposure.
Conclusively, the IPHC upheld the Synthes'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.

K&P’s CommentsUnder Japanese practice, whether there is a motivation or not is considered as one of the important factors in examining inventive step. The above decision shows a typical example in considering a motivation. Even if it is seemingly obvious, inventive step can be acknowledged if no common technical knowledge or description showing or at least suggesting the motivation to reach the claimed invention is found.

In December 2015, the IPHC handed down 18 decisions including the above case on patent and utility model, and overturned the previous decisions in 6 cases.

In December 2015, the IPHC handed down 4 decisions on trademark, and overturned the previous decisions in 2 cases.