May, 2015｜News Letter

1. What Kind of Matter should Constitute Disincentive Factor in Examining Inventive Step?

University of Cincinnati v. Commissioner of JPO, Case No. 2014 (Gyo-Ke) 10165 (Decision rendered on May 21, 2015)

The Applicant, University of Cincinnati (UC), filed a patent application relating to an aqueous composition for storage of red blood cells in 2005, but the application was finally rejected on the grounds of lacking inventive step by the Appeal Board of the JPO in 2014. Against the JPO's decision, UC filed a cancellation action before the IPHC in 2014.

Claim 1 of the UC’s patent application at issue claims as follows:
An aqueous composition for storage of red blood cells at 1 to 6°C, the composition comprising adenine, dextrose, at least one non-metabolizable membrane-protectant sugar and a pH buffering system, <snip> wherein the composition is free of exogenously derived chloride ions.

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 there were three differences between the invention of the patent application at issue and the invention disclosed in prior art reference (p.a.r.) 1, and the third difference was that the former specified “the composition is free of exogenously derived chloride ions”, while the latter did not, but rather disclosed only the composition containing sodium chloride; and decided on the third difference (i) that it could not be said that those skilled in the art would recognize sodium chloride as an essential ingredient, since aqueous solutions for long-term storage of red blood cells which contained adenine, dextrose, mannitol, sodium salt of phosphoric acid and did not contain sodium chloride had been well known before the filing date of the patent application at issue, and (ii) therefore that it could not be said that it was difficult for those skilled in the art to prepare a composition not containing sodium chloride, which was strongly motivated to decrease in p.a.r. 1.

Against this JPO’s decision, UC argued during the court proceedings that those skilled in the art must have regarded sodium chloride as an essential ingredient, since all the compositions disclosed in p.a.r. 1 contained sodium chloride, and thus there was no motivation to prepare a composition not containing sodium chloride, but rather it constituted a disincentive factor to remove sodium chloride.

On this point, having reviewed various p.a.r.s including p.a.r. 1 in detail, the IPHC found (i) that a solution for storage of red blood cells which did not contain sodium chloride had been well known at the filing of the patent application at issue, (ii) that it could be understood from p.a.r. 1 that sodium chloride was an ingredient which could adjust osmotic pressure by adjusting the content thereof, and (iii) that there was no disclosure or suggestion in p.a.r. 1 that sodium chloride or chloride ions were an essential ingredient for storage of red blood cells. On the basis of the above findings, the IPHC decided (i) that those skilled in the art recognized (a) that sodium chloride was not an essential ingredient for storage of red blood cells in p.a.r. 1 and (b) that it was not always necessary to add sodium chloride when osmotic pressure could be adjusted in a preferred range by other ingredients, and (ii) therefore that those skilled in the art could understand that a composition whose osmotic pressure was adjusted by ingredients other than sodium chloride in p.a.r. 1 sufficiently worked as a solution for storage of red blood cells, and thus could have easily adopted the technical feature that “the composition is free of exogenously derived chloride ions” by removing sodium chloride from the invention disclosed in p.a.r. 1.

Conclusively, the IPHC dismissed the UC’s appeal, and maintained 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 Japanese practice. As seen from the above decision, it would not be sufficient as a disincentive factor just to show that a prior art reference objectively discloses only a matter which is contrary to the technical feature of an invention at issue.

In May 2015, the IPHC handed down 16 decisions including the above case on patent, and overturned previous decisions in 2 cases.

Meanwhile, we have now confirmed that the appeal to the Supreme Court against the decision on Case No. 2012 (Gyo-Ke) 10419 (Sawai Pharmaceutical Co., Ltd. v. Daiichi Sankyo Co., Ltd.), which we introduced in the K&P’s IPHC Decision Report in October 2013, was not accepted on April 28, 2015.

In May 2015, the IPHC handed down 2 decisions on trademark, and overturned previous decisions in 1 case.