March, 2018｜News Letter

1. How should Disincentive Factor be Considered for Examining Inventive Step?

Nippon Steel & Sumitomo Metal Corporation v. JFE Steel Corporation, Case No. 2017 (Gyo-Ke) 10041&10042 (Decision rendered on March 12, 2018)

The Patentee, JFE obtained a patent relating to a hot-pressed member in 2013. Against Claims 1 to 5 of the JFE’s patent, Nippon Steel & Sumitomo Metal (NSSM) filed an invalidation trial with the JPO in 2013. During the trial proceedings, JFE demanded a correction of claims. The JPO admitted the correction, and rendered a decision of invalidation on the grounds of lacking inventive step on Claims 1 to 3, while dismissed the NSSM’s demand on Claims 4 and 5 in 2016. NSSM filed an appeal against the JPO's decision on Claims 4 and 5, and JFE filed an appeal against the JPO’s decision on Claims 1 to 3 to the IPHC in 2017.

Claim 1 of the corrected JFE’s patent at issue claims as follows:
A hot-pressed member comprising a steel sheet having a composition containing, by % by mass, C: 0.15 to 0.5%, Si: 0.05 to 2.0%, Mn: 0.5 to 3%, P: 0.1% or less, S: 0.05% or less, Al: 0.1% or less, N: 0.01% or less, and the balance including Fe and unavoidable impurities, a Ni-diffusion region which is present in a surface layer of the steel sheet, and an intermetallic compound layer and a ZnO layer which are provided in order on the Ni-diffusion region, the intermetallic compound layer corresponding to a phase present in a phase equilibrium diagram of a Zn-Ni alloy,
wherein … .

One of the main issues in this case related to how a disincentive factor should be considered for examining inventive step. The IPHC answered to the issue as follows:

In the JPO’s decision, the JPO found that there were 3 differences between the invention claimed in Claim 1 of the patent at issue and the invention disclosed in prior art reference 1 (p.a.r. 1). The first difference was that the former did not contain Ti, while the latter contained 0.02% of Ti. The JPO further found (i) that p.a.r. 3 demonstrated steel sheets not containing Ti (steel types A and C) as well as a steel sheet containing Ti and B (steel type B) in the working examples; and (ii) that p.a.r. 3 stated that Ti may be added … for effectively bringing out the effect of B, and that it is also possible to add Ti to improve the strength. On the basis of the above findings, the JPO decided on the first difference that those skilled in the art could have easily made not to contain Ti in the invention disclosed in p.a.r. 1 which did not contain B depending on a desired strength.

However, the IPHC overturned the above JPO’s decision for reasons stated below:

P.a.r.1 mentioned (i) that harden steels to which high strength and high hardness were imparted by quenching after heat-forming, for example, steel sheets listed in Table 1, were particularly preferable as the hot-pressed steel member; (ii) that steel type A contained 0.02 mass% of Ti, steel types B to D contained 0.01 mass% of Ti, and steel type E not containing Ti contained 12 mass% of Cr, which was not contained in steel types A to D, among the 5 steels listed in Table 1; and that (iii) a steel sheet having a Zn-Ni alloy coating on the steel type A showed good properties.
Further, although p.a.r. 3 stated as found by the JPO, these descriptions did not deny containing Ti in steel sheets not containing B, nor show that it was preferable not to contain Ti depending on desired strength in the case of steel sheets not containing B. Rather, p.a.r. 3 disclosed that Ti may be added to improve the strength.
Accordingly, it was acknowledged that there was no motivation not to contain Ti which had an effect of improving strength of steel sheets for those skilled in the art having regard to p.a.r.s 1 and 3, rather that there was a disincentive factor not to do so.

Conclusively, the IPHC upheld the JFE’s appeal on Claims 1 to 3, and cancelled the JPO’s decision on Claims 1 to 3, while dismissed the NSSM’s appeal on Claims 4 and 5.

Both of JFE and NSSM filed an appeal to the Supreme Court against this decision, and thus the decision is NOT final and binding.

K&P’s Comments This decision provides a positive example of a “disincentive factor”, which is one of the important positive factors for acknowledging inventive step under the Japanese practice. As seen from the above decision, excluding from the claimed invention a feature which may positively contribute to any effect in a prior art reference can be a disincentive factor.

(by Katsumasa OSAKI, Patent Attorney)

In March 2018, the IPHC handed down 24 decisions including the above case on patent, and overturned the previous decisions in 10 cases.

In March 2018, the IPHC handed down 4 decisions on trademark, and overturned the previous decision in 2 cases.

In March 2018, the IPHC handed down 2 decision on industrial design, both of which maintained the previous decisions.