Be aware of the determination of inventive step in Japan. Part 2

Various discussions have been offered by practitioners and academics about inventive step, but a key point is whether the difference from conventional patents or from the prior art is qualitatively or quantitatively significant.

The way JPO patent examination practice studies and determines the difference is “whether it is difficult to configure the invention with reference to the cited references of the prior art or not”. Therefore, “the difficulty of configuration” is the very essence of inventive step.

One element in judging the existence of “configuration difficulty” in the invention is whether the question of “whether there is a remarkable effect which cannot be achieved by the conventional invention” is considered. or not. the most substantial way of thinking of the JPO.

The patent system is designed to patent only inventions that contribute to the technological progress and industrial development of the country. It is the same with the patent system of any country.

Basically, the invention is specified by three elements: ie, “Prior art problem”, “Idea configuration” and “Effect”. “Problem” is the cause of the invention, “Effect” is the result of the invention. The “configuration” is the main body of the invention.

“Presence or absence of novelty” is essentially a question of “configuration”. “Inventive step” is examined on the basis of novelty, taking into account the problems and effects of the invention arising from the state of the art.

The effect is “how the invention can contribute to society and the economy by solving previous problems and providing benefits”. The idea of ​​granting patents to those who make a significant contribution is the same in all countries.

“Novelty”, which is a more fundamental patent requirement than inventive step, is fundamentally the obstacle of “whether or not conventional technology and invention are the same”. When it is completely identical to conventional technology, it is believed that there is therefore no novelty.

On the other hand, the judgment of the inventive step is “The invention has a novelty, but it is necessary that the invention is sufficiently different from the state of the art to grant a patent”. The “distance and difference between state of the art” obstacle of the invention is not clearly defined and in that sense it is a concept with a very “analog” meaning.

Accordingly, with respect to testing for inventive step, a variety of ideas and discussions have been made by patent specialists and academics. Consequently, the notification of the grounds for refusal of inventive step almost always concerns patent attorneys. In any event, the most common grounds for refusal are due to a lack of inventive step. Therefore, “inventive step” can be seen as an eternally boring question for the applicant and patent practitioners.

One frustration is that there are subtleties in determining inventive step. If it can be proven that there is a huge difference from the state of the art or “a great invention” which can exert an overwhelming effect that has never existed before, the inventive step is surely recognized by the PTO or the Court. However, in general, many inventions are not like “great inventions” and do not have prior art or what is called an “improved invention” improving the prior art. It’s the same in every power take-off.

Therefore, sometimes many patent practitioners, including myself, have to fight PTO examiners on “little inventions” or “improved inventions” in rather bitter battles.

During the study and decision-making on the inventive step, the technical acumen and social vision of the examiner, more specifically if he has positive basic feelings about the invention, if they are negative or positive, etc. In addition, and of course, the height of the obstacle to inventive step is also different according to the technical fields.

Furthermore, within the JPO, even if inventive step is refused at the examination stage, it is possible that it will be admitted at the appeal stage. In some cases, even if the patent office does not recognize inventive step, the court may recognize it. Thus, the determination of inventive step includes a wide variety of variables: it is a subtle judgment.

Therefore, the JPO has established and published “Patent Examination Standards” which are open to the public so that this judgment is not arbitrary, and which serve as a guide for examiners to judge inventive step. However, it should be noted that the inventive step determination variables as described above are still present.

Finally, when examining inventive step, it is necessary to take into account all of the above variable factors. As initially mentioned, when examining patents by the JPO, “the remarkable effects compared to the conventional technique” should be investigated initially.

The JPO’s consideration of the difference between the configuration of the invention and the cited references, as compared to how they are performed in US patent practice, is not appropriate.

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