June, 2017｜News Letter

1. Whether Support Requirement is Satisfied When Broader Concept of Compound is Defined in Claim, While Working Examples Demonstrate Only One Specific Compound?

X1 and X2 (Individuals) v. Kuraray Co., Ltd., Case No. 2016 (Gyo-Ke) 10064 (Decision rendered on June 29, 2017)

The Patentee, Kuraray, obtained a patent relating to a polyvinyl alcohol film in 2014. Against the Kuraray’s patent, Individuals, X1 and X2, filed an invalidation trial with the JPO in 2015. During the trial proceedings, Kuraray demanded a correction of claims, and the JPO admitted the correction, and dismissed X1’s and X2’s demand in 2016. X1 and X2 filed an appeal against the JPO's decision to the IPHC in 2016.

Corrected Claim 1 of the Kuraray’s patent at issue claims as follows:
A polyvinyl alcohol film comprising a polyvinyl alcohol polymer (A) and 0.001 to 1 part by mass of a nonionic surfactant (B) with respect to 100 parts by mass of the polyvinyl alcohol polymer (A), and having a pH of 2.0 to 6.8 at 20°C when dissolved in water at a concentration of 7% by mass.

One of the main issues in this case related to whether the support requirement is satisfied when a broader concept of a compound is defined in a claim, while the working examples demonstrate only one specific compound. The IPHC answered to the issue as follows:

In the JPO’s decision, regarding the support requirement, the JPO found that a group of surfactants “nonionic” is technically common in that such surfactants are nonionic and have an interfacial activity, and has similar properties, even though the specification described only the working examples using one specific compound as the nonionic surfactant. Further, the JPO found that X1 and X2 showed no concrete grounds that there is an actual example using a nonionic surfactant which could not solve the problem to be solved by the invention at issue. On the basis of the above findings, the JPO made a decision that those skilled in the art could understand that the problem of the invention at issue could be solved by satisfying the technical features of the invention at issue.

However, the IPHC overturned the above JPO’s decision as stated below.
(1) The specification of the patent at issue only disclosed working examples, comparative reference examples and comparative examples, where “a mixture containing 95% by mass of lauric acid diethanolamide, and diethanolamide as an impurity (hereinafter referred to as “the lauric acid diethanolamide compound”)” was used as the nonionic surfactant (B); but disclosed no examples and the like where a nonionic surfactant (B) other than “the lauric acid diethanolamide compound” was used.

(2) Even in the light of common technical knowledge at the time of filing the patent application at issue in addition to the disclosure of the specification of the patent at issue, it could not be recognized that the mechanism of yellowing after a long storage under room temperature, which was the problem of the invention at issue, could be specified as the oxidation of the nonionic surfactant, which was asserted by Kuraray.

(3) Further, even if those skilled in the art could recognize that the mechanism of yellowing after a long storage under room temperature was the oxidation of the nonionic surfactant, it cannot be said that those skilled in the art could recognize the mechanism inhibiting such yellowing after a long storage under room temperature by specifying the numerical range of content of the nonionic surfactant (B) to “0.001 to 1 part by mass” and the numerical range of a pH of the PVA polymer film to “2.0 to 6.8”.

(4) Moreover, it cannot be said that the reactivity of an oxidation reaction was equable irrespective of the kinds of nonionic surfactant; and the nonionic surfactant (B) of the invention at issue contains a mixture containing the raw materials, catalyst, solvent, degradants and the like in addition to scientific nonionic surfactant, thus it is considered that the reactivity of the oxidation reaction is more diverse.

(5) Accordingly, those skilled in the art, having regard to a disclosure that an inhibiting effect against yellowing was achieved in a working example where the lauric acid diethanolamide compound was used, could not recognize that any nonionic surfactant (B) of the invention at issue could provide a PVA polymer film inhibiting the yellowing irrespective of the kinds thereof by specifying the numerical range of the content of nonionic surfactant (B) to “0.01 to 1 part by mass” and the numerical range of a pH of the PVA polymer film to “2.0 to 6.8”.

(6) The reasoning made by the JPO acknowledging that the support requirement was satisfied is insufficient because the mechanism of the yellowing and that of its inhibition are not evident, thus it is unknown how the technical features of having nonionicity and interfacial activity, common in nonionic surfactants, and similarity in properties caused therefrom are related to the solution of the problem of the invention at issue.

Conclusively, the IPHC upheld the X1’s and X2’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 final and binding.

K&P’s Comments As seen from the above decision, in order to satisfy support requirement for broader conceptual claims in Japan, it is required to clearly make reasonable, persuasive and scientific explanations as to how the problem to be solved by the invention is solved by the technical feature(s) broadly defined in the claims in common, for example, by showing the mechanism of the invention, on the basis of the disclosure of the specification and common technical knowledge, in particular, when only one or a few types of working examples are demonstrated in the specification.

In June 2017, the IPHC handed down 21 decisions including the above case on patent and utility model, and overturned the previous decisions in 5 cases.

In June 2017, the IPHC handed down 6 decisions on trademark, and overturned the previous decision in 1 case.

In June 2017, the IPHC handed down no decisions on industrial design.