March, 2015｜News Letter

1. What Kind of Matter should Constitute Disincentive Factor in Examining Inventive Step?X (Individual) v. Showa Kasei Kogyo Co., Ltd. et al., Case No. 2014 (Gyo-Ke) 10132 (Decision rendered on March 26, 2015)

The co-Patentees, Showa Kasei Kogyo and Kaneka Corporation, obtained a patent relating to a hard vinyl chloride-based resin composition for medical use in 2013, against which X filed an invalidation trial before the JPO in 2013. The JPO dismissed X's demand in 2014, followed by X's appeal against the JPO's decision to the IPHC in 2014.

Claim 1 of the patent at issue claims as follows:
A hard vinyl chloride-based resin composition for medical use comprising 100 parts by weight of a vinyl chloride-based resin and 1-15 parts by weight of one or more plasticizers selected from cyclohexane dicarboxylate-based plasticizers and alkylsulfonic acid-based plasticizers, and having 35° or more of Rockwell hardness defined by JIS K7202.

One of the main issues in this case lied in what kind of matter should constitute a disincentive factor in examining inventive step. The IPHC answered to the issue as follows.

In the JPO's decision, the JPO found that differences between the invention of the patent at issue and that disclosed in prior art reference (p.a.r.) 1 lied in (i) that the former was specified as a hard composition for medical use, while the latter related to a semi-hard composition typically used for manufacturing blood bags and medical tubes, but was not specified as a hard composition for medical use, and (ii) that the former defined the composition as having 35° or more of Rockwell hardness, while the latter did not have such a definition. The JPO denied that the first difference could be easily conceived, and acknowledged that the invention of the patent at issue had inventive step.

However, having reviewed many and various prior art references in detail, the IPHC found (i) that it was a common technical knowledge at the time of filing the patent at issue that various medical parts were manufactured from hard vinyl chloride-based resins, and (ii) that some of those references further stated that vinyl chloride-based resins containing 10 to 15 parts by weight of plasticizers were used for hard medical parts; and concluded that those skilled in the art could have easily conceived applying the invention disclosed in p.a.r. 1 to hard medical parts.
The IPHC added (i) that although the specification of the patent at issue stated that cyclohexane dicarboxylate-based plasticizers and alkylsulfonic acid-based plasticizers were specifically selected as the plasticizers to provide hard medical parts in which discoloration by irradiation sterilization, which had been a widely-known problem, was remarkably reduced, the invention of the patent at issue did not define in the claims (a) that it was essentially sterilized by irradiation, or (b) that it was excellent in radiation resistance; (ii) that the hard medical parts of the patent at issue were not necessarily sterilized by radiation but could be sterilized by high-pressure steam which was a conventional and safety method, and thus (iii) that the above problem did not constitute a disincentive factor for applying the invention disclosed in p.a.r. 1 to hard medical parts.

Conclusively, the IPHC upheld X'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.

K&P’s CommentsThis decision provides a negative example of a “disincentive factor”, which is one positive factor for acknowledging inventive step under the Japanese practice. As seen from the above decision, it would be preferable to show that the matter to be asserted as a disincentive factor has a close relation to a claimed definition.

In March 2015, the IPHC handed down 22 decisions including the above case on patent, and overturned previous decisions in 7 cases.

Meanwhile, regarding “Taiho Pharmaceutical Co., Ltd. v. Anticancer Incorporated, Case No. 2013 (Gyo-Ke) 10311 (Decision rendered on February 19, 2015)” 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, according to a Japanese reputed leading business newspaper, NIKKEI, the Supreme Court will hand down a decision on a patent infringement litigation in which the main issue is the construction of so-called “product-by-process” claim on June 5, 2015. Upon obtaining the decision, we will provide a report thereon.

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