Transcript Update on IP High Court - American Intellectual Property
AIPLA Annual Meeting IP Practice in Japan Committee Pre-Meeting Seminar
Update on IP High Court
-Trend of Determination on Inventive Step in IP High Court in comparison with the JPO JPAA International Activities Center Toshifumi Onuki
Disclaimer
The views expressed in this presentation are those of the author and do not necessarily reflect the views of JPAA or the author’s firm. This presentation is for general informational purposes only and should not be taken as legal advice.
2 2014.10 (AIPLA)
Trend of Determination on Inventive Step -Based on analysis by JPAA Patent Commission October 21, 2014
Update on IP High Court 3
Patentee Success Rate in Invalidation Appeals (Trials) in the Japan Patent Office (JPO)
Patentee Success Rate
80% 70% 60% 50% 40% 30% 20% 10%
The Dark Age
0% 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 October 21, 2014
Update on IP High Court 4
Applicant Success Rate in Litigations Rescinding Ex parte Trial Decisions from the JPO
Applicant Success Rate
35% 30% 25% 20% 15% 10% 5%
The Dark Age
0% 2003 October 21, 2014 2004 2005 2006 2007 2008 2009
Update on IP High Court
2010 2011 2012 2013
5
Trend of Determination on Inventive Step
2002-2008 ： The Dark Ages against pro-patent trend on determination of Inventiveness Harsh Judgments for Applicants / Patentees Negating inventiveness
Reference 1 Reference 2
based on a well known art without teachings in
A+B C
the prior art (Tokyo High Court, 1997 (Gyo-ke)86)
No Inventive Step Invention A+B+C
October 21, 2014
Update on IP High Court 6
Trend of Determination on Inventive Step
2008-2009
：
Turning Period
Moderating the tough level on inventive step
Creating a test for weighing motivation to combine the prior art to reach the claimed invention
(IP High Court, 2008(Gyo-ke)10096 October 21, 2014 ）
Reference 1 Update on IP High Court A+B No motivation to Combine In Reference 1 or 2 Invention A+B+C Reference 2 7 C
How to Evaluate Inventiveness
Part 1
October 21, 2014
Update on IP High Court 8 Part 2
How to Evaluate Inventiveness (part 1)
October 21, 2014
YES Update on IP High Court 9
Determining the Scope of the Claimed Invention (Step 1)
Patent Office
Tends to determine the scope of the claimed invention without reference to the description of the specification
IP High Court
Tends to interpret the meaning of the claim terms with reference to the description of the specification (2007(Gyo-ke)10389, 2008 (Gyo ke) 10338) October 21, 2014
Update on IP High Court 10
How to Evaluate Inventiveness (part 1)
October 21, 2014
Update on IP High Court 11
Determining the Scope of the Prior Art Invention (Step 2)
Patent Office
Tends to broadly determine the scope of the prior art invention with reference to the common knowledge in addition to the disclosure in the prior art
IP High Court
Tends to narrowly determine the scope of the prior art invention with the emphasis on relation between problems to be solved and means for solving the problems (2010(Gyo-ke)10407, 2010(Gyo-ke)10405 ） October 21, 2014
Update on IP High Court 12
How to Evaluate Inventiveness (part 2)
October 21, 2014
Update on IP High Court 13
Well-known Art (Step 5)
Patent Office
Tends to negate inventive step on combining the prior art with the well-known art through
abstract determination
art, and (iii) the technical field of the prior art on: (i)the structure of the well-known art, (ii)the scope of the well-known
IP High Court
Tends to affirm inventive step through
concretely and minutely determining
(2008(Gyo-ke) the above (i)-(iii) and judging as to whether there is any motivation to combine the inventions 10209, 2011(Gyo-ke) 10214 ） October 21, 2014
Update on IP High Court 14
How to Evaluate Inventiveness (part 2)
October 21, 2014
Update on IP High Court 15
Teaching Away (Step 7)
Patent Office
Tends to broadly determine the scope of the prior art invention through
abstract determination
on: (i) the meaning of the prior invention, (ii) its concrete structure, (iii) operation, (iv)purpose/problems, (v)preconditions, (vi)the prior art to the prior invention, (vii)the common knowledge of filing date, and (viii)determination of differences
IP High Court
Tends to affirm inventive step by
minutely and concretely determining
the above (i)-(viii) and finding teachings away from the claim to affirm inventive step (2011(Gyo-ke)10022, 2008(Gyo-ke)10431) October 21, 2014
Update on IP High Court 16
How to Evaluate Inventiveness (part 2)
October 21, 2014
Update on IP High Court 17
Design Choice (Step 8)
Patent Office
Tends to broadly determine through negate inventive step
abstract finding
its specific structure, and (iii) purpose in claimed invention for : (i)claimed invention, (ii)purpose in claimed invention for adopting adopting its specific structure, determine differences between the claimed invention and the prior invention as a design choice to
IP High Court
Tends to affirm inventive step by
minutely and concretely determining
the above (i)-(iii) and finding the difference not design choice to affirm inventive step (2011(Gyo ke)10171, 2009(Gyo-ke)10289) October 21, 2014
Update on IP High Court 18
How to Evaluate Inventiveness (part 2)
October 21, 2014
Update on IP High Court 19
Analogy in Technical Field (Step 6-1)
Patent Office
Tends to jump to a conclusion that the prior art combinable
without considering
it or
interpreting
the technical field
broadly
IP High Court
Tends to
interpret
the technical field
narrowly
: Affirming inventive step even though the prior art is in the same technical field if there are some differences in problems to be solved, means for solving the problems, operations/functions, or technical ideas (2010(Gyo-ke)10345, 2008(Gyo-ke)10305 ） Affirming inventive step when the technical fields are different (2011(Gyo-ke)10021, 2010(Gyo-ke)10298) October 21, 2014
Update on IP High Court 20
How to Evaluate Inventiveness (part 2)
October 21, 2014
Update on IP High Court 21
Analogy in Problems to be Solved (Step 6-2)
Patent Office
Tends to negate inventive step by combining the prior art
without looking at the problems to be solved
IP High Court
Tends to affirm inventive step (2011(Gyo-ke)
focusing on differences in problems to be solved
0214, 2008(Gyo-ke)10305) October 21, 2014
Update on IP High Court 22
How to Evaluate Inventiveness (part 2)
October 21, 2014
Update on IP High Court 23
Analogy in Operations/Functions (Step 6-3)
Patent Office
Tends to negate inventive step by merely combining teachings in the prior art
without considering operations or functions
IP High Court
Tends to
value operations or functions
technical ideas (2011(Gyo-ke) in association with problems to be solved and 10269, 2010(Gyo ke)10405) October 21, 2014
Update on IP High Court 24
How to Evaluate Inventiveness (part 2)
October 21, 2014
Update on IP High Court 25
Teachings in the Prior Art (Step 6-4) -Combination
Patent Office
Tends to determine
replacing the primary reference with the secondary one
fields or operations are analogous as it could have easily been thought of where technical
IP High Court
Tends to affirm inventive step unless the prior art teaches suggestions or motivations to replace the element (2011(Gyo-ke)10022, 2010(Gyo-ke)10021) October 21, 2014
Update on IP High Court 26
Teachings in the Prior Art (Step 6-4) -Analogy in Technical Field
Patent Office
Tends to determine a technical field of the prior art the same where the technical field is the same
in a broader concept
IP High Court
Tends to affirm inventive step where the technical fields are different
in a strict meaning
concept (2010(Gyo-ke)10237, 2009(Gyo ke)10330) even if the same in the broader October 21, 2014
Update on IP High Court 27
Teachings in the Prior Art (Step 6-4) -Numerical Limitations
Patent Office
Tends to
regard choices in numerical ranges as mere a design choice
without teachings in the prior art
IP High Court
Tends to affirm inventive step unless the numerical range is commonly used without teaching of the technical idea for the numerical limitation (2008(Gyo-ke)10300, 2009(Gyo-ke)10134) October 21, 2014
Update on IP High Court 28
Trend of Determination on Inventive Step Add-up
Inventive Crane
Determination level on inventive step has been moderated recently in both the JPO and IP High Court IP High Court tends to take a more generous approach for determination on inventive step than the JPO October 21, 2014
No Inventive Zone Update on IP High Court 29
October 21, 2014 Any Questions?
Thank you for your kind attention Toshifumi Onuki TMI Associates [email protected]
Update on IP High Court 30
Statistics
October 21, 2014
Update on IP High Court 31
Litigations Rescinding Trial Decisions from the JPO
Ex parte
cases vs.
Inter parte
cases
Ex parte Inter parte
100% 90% 80% 70% 60% 50% 40% 30% 20% 10% 0%
About 60% About 40%
3
2012 Update on IP High Court
4
2013
5
2014
October 21, 2014
32
80 60 40 20 0 120 100
Litigations Rescinding
Inter Parte
Trial Decisions Annual Case Transition Other reasons Inventive Step
1
2010
2
2011
3
2012
4
2013
October 21, 2014
Update on IP High Court 33
160 140 120 100 80 60 40 20 0
Litigations Rescinding
Ex Parte
Trial Decisions Annual Case Transition Other reasons Inventive Step
October 21, 2014
Update on IP High Court 34
Litigations Rescinding
Inter Parte
Trial Decisions Favorable Rate for Patentees
100% 90% 80% 70% 60% 50% 40% 30% 20% 10% 0% 1
2010
2
2011
3
2012
4
2013
5
2014 Adverse to patentees
JPO’s invalidation decision dismissed by IP High Court JPO’s validation decision rescinded by IP High Court
Favorable to patentees JPO’s invalidation
decision rescinded by IP High Court JPO’s validation decision dismissed by IP High Court 35
October 21, 2014
Update on IP High Court
100% 90% 80% 70% 60% 50% 40% 30% 20% 10% 0%
Litigations Rescinding
Ex Parte
Trial Decisions Favorable Rate for Applicants Adverse to applicants Favorable to applicants
October 21, 2014
Update on IP High Court 36
Litigations Rescinding Inter Parte Trial Decisions Favorable Rate per IP Division
120% 100% 80% 60% 40% 20% 0%
2010
2010 October 21, 2014
2011
2011
2012
2012
Update on IP High Court 2013
2013
2014
2014
37 1 st Div.
2 nd Div.
3 rd Div.
4 th Div.
Summary
Appeal cases from Decisions by the JPO About
60%
of the cases are
Ex parte
About
40%
of the cases are litigations
Inter parte
litigations Rate has remained steadily Favorable Litigation Rate for Patent/Application Owners
Litigations Rescinding
Ex Parte
Trial Decisions
Fluctuated from 17% to 40% between Divisions in IP High Court Around 24% Average in 2013
Litigations Rescinding
Inter Parte
Trial Decisions
Fluctuated from 61% to 71% between Divisions in IP High Court Around 65% Average in 2013 October 21, 2014
Update on IP High Court 38