February, 2015｜News Letter

How Comprehension of Common Technical Knowledge Influences Examination of Inventive Step?Taiho Pharmaceutical Co., Ltd. v. Anticancer Incorporated, Case No. 2013 (Gyo-Ke) 10311 (Decision rendered on February 19, 2015)

The Patentee, Anticancer, obtained a patent relating to an animal model for human disease in 1997, against which Taiho filed an invalidation trial before the JPO in 2012. The JPO dismissed Taiho's demand in 2013, followed by Taiho's appeal against the JPO's decision to the IPHC in 2013.

Claim 1 of the patent at issue claims as follows:
A non-human animal model for human neoplastic disease, said animal having neoplastic mass of tissue obtained from a human organ other than brain implanted into the corresponding organ of said animal, and having sufficient immunodeficiency to allow said implanted neoplastic tissue to grow and metastasize.

One of the main issues in this case lied in how the comprehension of common technical knowledge influenced the examination of inventive step. The IPHC answered to the issue as follows:

In the JPO's decision, the JPO found that a difference between the invention of the patent at issue and that disclosed in prior art reference (p.a.r.) 1 lied in that the former specified the invention to an animal model to a metastasis of human neoplastic disease, while the latter was a nude mouse infiltrated with neoplasm and with presence or absence of metastasis unknown, and thus the latter could not be recognized as an animal model for research and tests on metastasis. Regarding the difference, the JPO concluded that there was no common technical knowledge that metastasis would inevitably occur when infiltrated with neoplasm, and that those skilled in the art could not easily conceive the invention of the patent at issue on the basis of p.a.r. 1 in view of other p.a.r.s.

However, having reviewed many and various prior art academic literatures in detail, the IPHC found that it was generally recognized as common technical knowledge relating to progression of cancer that, in a state where infiltration of neoplasm could be observed, infiltration would further spread as time proceeded, and that the chance of metastasis would rise.
On the basis of the above finding, the IPHC concluded that those skilled in the art could have easily conceived the invention of the patent at issue on the basis of p.a.r. 1 in view of other p.a.r.s. with reference to the above common technical knowledge.

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

The period for appeal to the Supreme Court has not expired since the period was extended by 30 days for the losing party, Anticancer, which is a foreign entity, and thus the decision is NOT final and binding as of April 6, 2015.

K&P’s CommentsAs seen from the above decision, the conclusion of the JPO and that of the IPHC are completely opposite depending on the understanding of common technical knowledge on the relationship between infiltration and metastasis. This decision teaches that it is very important and even critical in determining inventive step in some cases to adequately show common technical knowledge closely related to the invention at issue.

In February 2015, the IPHC handed down 13 decisions including the above case on patent, and overturned previous decisions in 4 cases.

In February 2015, the IPHC handed down 3 decisions on trademark, all of which maintained the previous decisions.