Patent Case Law and Intellectual Property Practice Blog

Explore existing articles on inventive step, design choices, motivation and teaching away. The collection includes case notes, reviews of publications and lecture materials. See each article for its discussion and sources.

Read the Japanese version / 日本語版を読む [IP Practice Online] “20 inventive-step issues, 3 min each” (Authors; supervisor: Hideki Takaishi) [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. 3. Identification of cited inventions is crucial in revocation litigation. Examine challenges to JPO generalization. 4. Configurations correlated

Read the Japanese version / 日本語版を読む Tokyo District Court, Reiwa 7 (Wa) 70141, “Inactivated vaccine preparation” (Presiding Judge 中島) 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 inacti

Read the Japanese version / 日本語版を読む [Article / Patents] A study of design choices in inventive-step assessment (鈴木守, 長嶺浩之, Patent, September 2024) 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: (1) Numerical ranges: The specification gives no basis or technical significan

Read the Japanese version / 日本語版を読む [Article / Patents] Double standards in inventive-step assessment (Hideki Takaishi, Patent, June 2024) 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. For numerical-limit and parameter inventions,

Read the Japanese version / 日本語版を読む [Article / Patents] Examining the patentability of impurity claims (松岡徹, Patent, July 2024) 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

Read the Japanese version / 日本語版を読む Case No. 2025 (Gyo-ke) 10056 [Women's clothing] (Presiding Judge Moritomi) *Inventive step recognized. The configuration of the invention in Exhibit Ko 1 (an old sports bra), in which breast-support flaps overfit breast-engaging pockets, is intended to solve the problem of that invention (preventing pain from breast movement during exercise such as jogging), which differs from the problem of the invention at issue (accommodating various bus

Read the Japanese version / 日本語版を読む Tokyo District Court, Case No. 2023 (Wa) 70402 [Siphonic rain gutter system] (Presiding Judge Nakajima) *Inventive step recognized. The inventions in Exhibits Otsu A25 and Otsu A26 lack motivation for combination because their technical approaches are opposites (the former generates turbulence; the latter prevents it). The invention in Exhibit Otsu A21 (ordinary drainage) and that in Exhibit Otsu A25 (siphonic drainage) differ in technical

Read the Japanese version / 日本語版を読む [IP Practice Online] Introduction of important patent judgments newly included in "Patent Case Law Encyclopedia, 4th edition" (Chizai Juku) (Hideki Takaishi, Nakamura & Partners) [Some case introductions omitted] 1. Central message of the video How the "problem of the invention" is set in the specification affects all of the support requirement, enablement, inventive step, addition of new matter, claim interpretation and satisfaction of cla

Read the Japanese version / 日本語版を読む Case No. 2025 (Gyo-ke) 10037 [Cross-sectional image detection apparatus] (Presiding Judge Hasegawa) *Inventive step denied <Inventive step (1: Identification of the gist of the invention)> (Translation of the quoted judgment) "Neither the 'image including the axis of the image object of a dental artifact' nor the 'axis of the image object of a dental artifact' in the configuration of Invention 1 at issue asserted by the plaintiff is stated