Patent Case Law and Intellectual Property Practice Blog

[Summary; case discussions omitted] 1. Motivation to combine and design choice are independent. Weak correlation with problem-solving favors design choice. 2. Cited-invention eligibility: No comment.

Failure to meet the support requirement (+ lack of inventive step) “Lactococcus garvieae of a serotype that is neither KG− nor KG+” also includes type III Lactococcus garvieae, observed from 2021 onward. The specification contains no disclosure whatsoever of a vaccine preparation against streptococcosis caused by type III bacteria, and an inactivated type III vaccine is ineffective against streptococcosis caused by type II bacteria.

The court held that consumption tax is not added to damages under Article 102(3). = Tokyo District Court, Reiwa 6 (Wa) 70333 ≠ Reiwa 3 (Ne) 10037, “Remitch”

The trial decision rejecting invalidation identified a difference: the invention’s “information provision apparatus” was a single apparatus, whereas the primary cited invention’s “learning and daily-life support system 1” included multiple apparatuses—a “learning and daily-life support server 2” and a “user terminal 3.” It therefore recognized novelty and inventive step.

The criteria for finding a “design choice,” particularly when inventive step can be denied without direct evidence (a secondary reference), were studied through device/system cases. Cases recognizing design choices without evidence fall into three types:

The dividing line for a “design choice” Whether the configuration constituting the difference correlates with the “problem addressed by the invention,” and whether its technical significance is disclosed in the specification, is the decisive boundary separating obviousness from non-obviousness.

Under what conditions does a claim that numerically limits only the impurity content of a known substance satisfy “inventive step” and the “support requirement”? 1. Inventive step: The “limits” of conventional methods are key Reducing impurities itself is often considered an “obvious problem.” Inventive step therefore depends on whether the value is achievable by extending conventional methods.

The IP High Court reversed the Osaka District Court’s treatment of adding a patent claim as an “amendment of the action” (Code of Civil Procedure, Article 143), holding that it was “submission of a means of attack or defense” (Article 157). The reason lies in the Patent Act’s basic structure of granting one patent right per patent application.

While retaining traditional territoriality (the principle that a patent’s effect is confined to the territory of that country), the article proposes “flexible application” to ensure the effectiveness of patent rights. In determining whether an act of working was performed in Japan, it emphasizes not only the actor’s location but also the “place where the act’s result occurs.”

1. Metaverse space and the current IP system JPO guidance: Protection may extend to “programs that function similarly in both real and virtual environments (games, etc.),” but in principle does not extend to merely imitating, in virtual space, an article characterized by its shape.