December, 2017｜News Letter

1. How should Description of Academic Literature be Construed in Examining Inventive Step?

Phycoil Biotechnology International, Inc. v. Commissioner of JPO, Case No. 2017 (Gyo-Ke) 10044 (Decision rendered on December 13, 2017)

The Applicant, Phycoil, filed a patent application relating to a microalgae fermentation using controlled illumination in 2010, 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, Phycoil filed a cancellation action with the IPHC in 2017.

Claim 18 of the Phycoil’s patent application at issue claims as follows:
A method of manufacturing a material, comprising:
providing a microalgae capable of producing the material;
culturing the microalgae in a media, wherein the media comprises a carbon source;
applying a low irradiance of light of 5 μmol photons m^-2s^-1 or below to the microalgae; and
allowing the microalgae to accumulate at least 10% of its dry cell weight as the material.

One of the main issues in this case related to how a description of an academic literature should be construed in examining inventive step. The IPHC answered to the issue as follows:

First, having reviewed a prior art reference 1 (p.a.r. 1), which is an academic literature, the IPHC found (i) that it read “Chlorella was heterotrophically cultivated in shaking flasks at 28℃ and 200 rpm by using colonies from 1.5% agar plates or exponentially growing seed culture. Weak light (5 μmol m^-2 s^-1) was also adopted” in the process of “Shake-flask cultivation of Chlorella protothecoides” in the section of “Materials and methods”, and (ii) that it read “To enhance Chlorella cell growth to higher cell density, the process of fermentation was improved in 5-l bioreactor based on the optimized parameter in shaking flasks” in the process of “Fermentation optimization in 5-l bioreactor” in the section thereof.
Taking into consideration the above descriptions, the IPHC construed that the optimization condition was found for the growth of Chlorella in the cultivation process, and then the optimized condition was applied to the bioreactors. On the basis of the above construction, the IPHC decided that the strength of the irradiated light was not different in both the cultivation process and the fermentation process, and thus “weak light (5 μmol m^-2 s^-1)” was adopted in both of the cultivation process and the fermentation process.
In this connection, during the court procedures, Phycoil asserted that the description of “Weak light (5 μmol m^-2 s^-1) [being] also adopted” should be construed as a conventional art in connection with “colonies from 1.5% agar plates or exponentially growing seed culture”.
However, the IPHC rejected the Phycoil’s assertion by pointing out that p.a.r. 1 was an academic literature, and thus it was reasonable to infer that the section of “Materials and methods” was written so that researchers other than the authors could replicate the methods.

Conclusively, the IPHC dismissed the Phycoil’s appeal, and upheld the JPO’s decision denying the inventive step of Claim 18 at issue.

An appeal to the Supreme Court was NOT filed against this decision, and thus the decision is final and binding.

K&P’s Comments When a patent document is used as a prior art reference in examining novelty or inventive step, a description which is only simply stated in the text of specification, but is not specifically supported in the working examples and the like, is often considered not to be substantially disclosed in the patent document.
Contrary to a patent document, as seen from the above IPHC decision, courts would acknowledge that academic literatures must be written so that researchers other than the authors could replicate the methods even if a description is simple. In other words, courts would generally place more reliance on the description of academic literatures as a citation.

(by Katsumasa OSAKI, Patent Attorney)

In December 2017, the IPHC handed down 15 decisions including the above case on patent, and overturned the previous decisions in 5 cases.

In December 2017, the IPHC handed down 5 decisions on trademark, and overturned the previous decisions in 4 cases.

In December 2017, the IPHC handed down no decision on industrial design.

Additionally, we have now confirmed that an appeal to the Supreme Court against the decisions on 2016 (Gyo-Ke) 10032 (Honeywell International, Inc. v. Daikin Industries, Ltd.), which we introduced in the K&P’s IPHC Decision Report in February, 2017, was dismissed on January 19, 2018; and an appeal to the Supreme Court against the decisions on 2016 (Ne) 10046 (Debiopharm International S.A. v. Towa Pharmaceutical Co., Ltd.), which we introduced in Special News Flash of K&P’s IPHC Decision Report in 2017, was dismissed on May 8, 2018.