September, 2017｜News Letter

1. How should Advantageous Effect of Claimed Invention Including Post-Filing Experimental Data be Considered in Examining Inventive Step?

Mitsubishi Chemical Corp., Mitsubishi-Chemical Foods Corp. v. Riken Vitamin Co., Ltd., Case No. 2016 (Gyo-Ke) 10056 (Decision rendered on September 11, 2017)

The Patentees, Mitsubishi Chemical and Mitsubishi-Chemical Foods (collectively called “Mitsubishi”) obtained a patent relating to a coffee drink in 2013. Against the Mitsubishi’s patent, Riken Vitamin (RV) filed an invalidation trial with the JPO in 2014. During the trial proceedings, the JPO issued an advance notice of decision stating that the patent should be made invalid in 2015, and Mitsubishi demanded a correction of claims. The JPO admitted the correction, but rendered a decision of invalidation on the grounds of lacking inventive step in 2016. Mitsubishi filed an appeal against the JPO's decision to the IPHC in 2016.

Claim 1 of the Mitsubishi’s patent at issue after the correction claims as follows:
A coffee drink containing milk components characterized in that the coffee drink contains 0.0001 to 0.5% by weight of a triglycerol fatty acid ester having a degree of polymerization of 3 and molecular weight-reduced polysaccharides derived from a coffee extract having been treated with a mannan-degrading enzyme in the coffee drink satisfy at least one of the following requirements (A) and (B):
(A) a molecular weight peak top of the polysaccharides appears at molecular weight of from 1000 to 4000, when measured by gel permeation chromatography;
(B) a weight-average molecular weight of the polysaccharides is from 1000 to 6000, when measured by gel permeation chromatography.

One of the main issues in this case related to how an advantageous effect of the claimed invention including post-filing experimental data should be considered in examining inventive step. The IPHC answered to the issue as follows:

First, having reviewed and compared Claim 1 of the patent at issue with the prior art reference 4 (p.a.r. 4), the IPHC found that they were different only in that the former specified that the polysaccharides satisfied at least one of the requirements (A) and (B), while the latter did not specify it, and decided that those skilled in the art could have easily conceived the difference in view of the structure of the invention.

Further, the IPHC generally ruled that, even though those skilled in the art could have easily conceived the claimed invention in view of the structure of the invention, there remained a room to admit inventive step if the claimed invention showed an advantageous effect over the invention disclosed in the prior art reference and the effect was a remarkable one beyond the expectation of those skilled in the art on the basis of the common technical knowledge at the priority date of the patent at issue, provided that such a remarkable effect was disclosed in the specification of the patent at issue or it could be inferred by those skilled in the art from the disclosure of the specification.
In this connection, Mitsubishi asserted that the remarkable effect of the claimed invention that bitter taste, acid taste and astringency of the claimed coffee drink was weak was brought about by the combination of the triglycerol fatty acid ester (TP) and the treatment with mannan-degrading enzyme; and submitted a post-filing experimental data showing that the effect was brought about by the combination of TP and the treatment as grounds of their assertion.

On the basis of the above general ruling and the Mistubishi’s assertion, the IPHC first reviewed the effect of the claimed invention on the basis of the description of the specification, and found that the Examples demonstrated in the specification only compared milk coffee where TP was added to a coffee extract treated with a mannan-degrading enzyme (Working Examples 1 and 2) with milk coffee where sucralose fatty acid ester (SE) was added to a coffee extract treated with a mannan-degrading enzyme (Reference Examples 1 and 2) to show that there were many opinions that bitter taste, acid taste and astringency was weak in the former, while there were many opinions that the milk coffee showed bitter taste, acid taste and astringency in the latter. On the basis of the above findings, the IPHC decided that those skilled in the art could not directly infer from the description of the specification that the effect was brought about by the combination of TP and the treatment with mannan-degrading enzyme.
Further, the IPHC reviewed the Mitsubishi’s assertion on the grounds of the post-filing experimental data, and decided that the Mitsubishi’s assertion was originally improper since their assertion was based on the post-filing experimental data apart from the description of the specification of the patent at issue.

Conclusively, the IPHC dismissed the Mitsubishi’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.

K&P’s Comments As the IPHC generally ruled in the above decision, a remarkable effect is one of the main factors for acknowledging inventive step in Japan, provided that such a remarkable effect is disclosed in the specification or it could be inferred by those skilled in the art from the disclosures of the specification. Accordingly, a post-filing experimental data showing a remarkable effect apart from the description of the specification is not considered for examining inventive step.

(by Katsumasa OSAKI, Patent Attorney)

In September 2017, the IPHC handed down 16 decisions including the above one case on patent, and overturned the previous decisions in 2 cases.

In September 2017, the IPHC handed down 4 decisions on trademark, and overturned the previous decisions in 2 cases.

In September 2017, the IPHC handed down 1 decision on industrial design, which maintained the previous decision.

Incidentally, the IPHC announced that Case Nos. 2016 (Gyo-Ke) 10182 (Nippon Chemiphar Co., Ltd. v. Shionogi & Co., Ltd.) and 2016 (Gyo-Ke) 10184 (X (Individual) v. Shionogi & Co., Ltd.) will be examined by the Grand Panel and that an oral hearing for these two cases will be held on February 2, 2018. These cases are cancellation actions against the JPO’s decisions dismissing demands for invalidation of a Shionogi’s patent relating to a pyrimidine derivative made by Nippon Chemiphar and by X.
We will report the Grand Panel’s decision soon after it is issued.