April, 2017｜News Letter

1. What Invention should Claimed Invention be Compared with to Show Remarkable Effect of Claimed Invention?

Philip Morris Products S.A. v. Commissioner of JPO, Case No. 2016 (Gyo-Ke) 10106 (Decision rendered on April 25, 2017)

The original applicant, Duke University, filed an international patent application relating to a tobacco-based nicotine aerosol generation system in 2010, and then Duke University assigned the right of the application to Philip Morris Products (PMP). The application was finally rejected in 2014 by the Appeal Board of the JPO on the grounds of lacking inventive step. Against the JPO's decision, PMP filed a cancellation action with the IPHC in 2016.

Claim 1 of the PMP’s patent application at issue claims as follows:
A device for delivering nicotine to a subject, the device comprising a housing, the housing comprising:
a) an inlet and an outlet in communication with each other and adapted so that … :
b) a first internal area in communication with the inlet, the first internal area comprising either a source of the compound for forming particles comprising nicotine or a natural product nicotine source,
c) a second internal area in communication with the first internal area, …, and
d) optionally, a third internal area in communication with the second internal area and the outlet;
wherein the natural product nicotine source is heated and comprises a tobacco, an alkaline material and water; and wherein the alkaline material is selected from the group consisting of …, sodium hydrogen carbonate, potassium hydroxide and potassium carbonate.

One of the main issues in this case related to what invention should the claimed invention be compared with in order to show a remarkable effect of the claimed invention, which is an important positive factor for acknowledging inventive step. The IPHC answered to the issue as follows:

First, having reviewed Claim 1 of the patent application at issue and prior art reference (p.a.r.) 1, the IPHC found (i) that there were two differences between the two, and (ii) that the 1^st difference was that the former specified the nicotine source as a natural product nicotine source which was heated and comprised a tobacco, an alkaline material and water; while the latter comprised a nicotine source which comprised nicotine in a volatile form, but did not specify the nicotine source as the nicotine source which was heated and comprised a tobacco, an alkaline material and water. The IPHC further found that p.a.r. 2 disclosed using a natural tobacco treated with sodium hydrogen carbonate or potassium carbonate and bringing the treated natural tobacco into contact with water and a heat source for facilitating a release of flavor ingredients in the tobacco material.
On the basis of the above findings, the IPHC decided that those skilled in the art could have easily conceived the claimed invention of the patent application at issue by applying the invention disclosed in p.a.r. 2 to the invention disclosed in p.a.r. 1.

In this connection, during the court proceedings, PMP asserted that the claimed invention brought about a remarkable effect by showing a supplemental experimental result in which an experimental system using only natural product nicotine source as a nicotine source and an experimental system using a nicotine source used in p.a.r. 1 were compared to show that the variation of the delivery amount of nicotine in the former was lower than that in the latter. However, the IPHC rejected the PMP's assertion by pointing out (i) that whether the claimed invention brought about a remarkable effect or not should have been evaluated by comparing the effect of the claimed invention with that of the invention disclosed in p.a.r 1 to which the invention disclosed in p.a.r. 2 was applied, but (ii) that a tobacco material specified in the invention disclosed in p.a.r. 2 was not used in the supplemental experiment.

Conclusively, the IPHC dismissed the PMP’s appeal and upheld the JPO’s decision.

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

K&P’s Comments Under Japanese practice, a remarkable effect of the claimed invention is a very important and major factor for examining inventive step. As seen from the above IPHC decision, when a patent application is rejected as lacking inventive step on the basis of the closest prior art reference in view of another relevant prior art reference, the Applicant should show a remarkable effect over the closest prior art to which the another prior art reference is applied, not just over the closest prior art alone.

In April 2017, the IPHC handed down 15 decisions including the above case on patent, and overturned the previous decisions in 2 cases.

In April 2017, the IPHC handed down 1 decision on trademark, and maintained the previous decision.

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