November, 2016｜News Letter

1. How should Problem to be Solved be Considered in Examining Inventive Step?

Bridgestone Corporation v. Commissioner of JPO, Case No. 2016 (Gyo-Ke) 10079 (Decision rendered on November 16, 2016)

The Applicant, Bridgestone, filed a patent application relating to a tire in 2013, however, the application was finally rejected in 2016 by the Appeal Board of the JPO on the grounds of lacking inventive step. Against the JPO's decision, Bridgestone filed a cancellation action with the IPHC in 2016.

Claim 1 of the Bridgestone’s patent application at issue claims as follows:
A tire comprising, on a tread of the tire, a surface rubber layer … and an inner rubber layer … ; wherein an elastic modulus of rubber of the surface rubber layer Ms is lower than an elastic modulus of rubber of the inner rubber layer Mi, a ratio of Ms/ Mi is 0.01-1.0, the surface rubber layer has a thickness of … , … , … , and the surface rubber layer is formed of non-foamed rubber and the inner rubber layer is formed of foamed rubber.

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

In the JPO’s decision, the JPO found that one of the differences between the invention at issue and the invention disclosed in prior art reference (p.a.r) 1 was that the former specified, regarding “the surface rubber layer” and “the inner rubber layer”, (i) that a ratio of Ms/ Mi is 0.01-1.0, (ii) that the surface rubber layer is formed of non-foamed rubber and the inner rubber layer is formed of foamed rubber, and (iii) that Ms is lower than Mi, while the latter disclosed (i) that rubber B was used as a rubber of the surface outer layer, and rubber B had Hs (-5℃) of 46 and pico abrasion index of 43, and (ii) that rubber A was used as a rubber of the body layer, and rubber A had Hs (-5℃) of 60 and pico abrasion index of 80; and the JPO made the decision that those skilled in the art could have easily conceived the difference on the basis of common technical knowledge and some other p.a.r.s.

However, the IPHC overturned the above JPO’s decision as stated below.
First, having reviewed the specification of the patent application at issue and p.a.r. 1 in detail, the IPHC found (i) that the invention at issue was to secure sufficient ground contact area by favorably defining an elastic modulus of a rubber on the tread surface that forms the vicinity of the ground contact surface while the tire was in a newly produced state in order to provide the tire with a tread to which foamed rubber was applied that stably exhibited excellent on-ice performance, which was a combination of braking performance and driving performance of a tire, on the ice road surface from the beginning of its use; while (ii) that the invention disclosed in pa.r. 1 was to reduce distances traveled of scalping traveling for removing vent-spew and coating of mold-releasing agent which were adhered to the tire shortly after the vulcanization in winter tires, racing tires or the like to swiftly deliver desired performance.

On the basis of the above finding, the IPHC decided (i) that the invention at issue was to arrange the surface rubber layer having a low elastic modulus so as to deliver the on-ice performance at the initial stage of its use, while the invention disclosed in p.a.r. 1 was to easily remove the surface layer to swiftly deliver the desired performance of the body layer, thus (ii) that the specific problem at the initial stage of its use was different between the invention at issue and the invention disclosed in p.a.r. 1, and the technical concepts on the surface layer were contradictory, and therefore (iii) that even those skilled in the art could not easily conceive of focusing on the ratio of the elastic modulus of the surface rubber layer and that of the inner rubber layer to specify the ratio in a certain range so as to stably provide excellent on-ice performance on the surface outer layer at the initial stage without suggesting the specific problem of the invention at issue.

Conclusively, the IPHC upheld Bridgestone’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 CommentsAs seen from the above decision, the IPHC applied a so-called “problem-solution” approach to this case for examining inventive step. More and more court decisions are placing importance on and applying the “problem-solution” approach in recent years though an approach for examining inventive step is not limited to the “problem-solution” approach in Japan, unlike the EP.

In November 2016, the IPHC handed down 16 decisions including the above case on patent, and overturned the previous decisions in 1 case.

In November 2016, the IPHC handed down 5 decisions on trademark, and upheld all of the previous decisions.

In November 2016, the IPHC handed down 7 decisions on industrial design, and overturned the previous decisions in 4 cases.