A Draft Revision of the Examination Guidelines on Inventive Step Has Been Published
Updated: 1 day ago
Article information
Article type: Legal and examination updates
Display and classification checked: 2026-09-30
Categories: Patents
Topics: Inventive step / Motivation and teaching away
Published on this website: 2015-01-26
Industrial Structure Council, Intellectual Property Committee, Patent System Subcommittee
Summary of the Proceedings of the Third Meeting of the Working Group on the Patent Examination Standards Expert Committee
The issues are as follows.
How to Consider the Various Viewpoints Concerning Motivation
State in the Examination Guidelines that motivation to apply a secondary cited invention, etc. to the primary cited invention is determined by comprehensively considering viewpoints such as (1) the relationship between the technical fields, (2) the commonality of the problems, (3) the commonality of operations and functions, and (4) suggestions in the content of the cited inventions, and that examiners should note that focusing on only one of these viewpoints does not always enable them to determine whether motivation is affirmed. Also, show specific examples on this point in the collection of examples or the collection of court decisions.
Whether the Presence or Absence of Motivation May Be Determined Solely by the “Relationship between the Technical Fields”
State in the Examination Guidelines that, among the four viewpoints concerning motivation that should be considered comprehensively, with regard to the “relationship between the technical fields,” examiners must also consider other viewpoints that may provide motivation, such as the “commonality of the problems.”
Selection of a Primary Cited Invention Whose Technical Field or Problem Differs from That of the Claimed Invention
State in the Examination Guidelines that, ordinarily, a primary cited invention should be selected that has the same or a closely related technical field or problem to be solved as the claimed invention.
Where a primary cited invention is selected whose technical field or problem to be solved differs greatly from that of the claimed invention, state as points to note that (a) reasoning tends to become difficult, and (b) in such a case, more careful reasoning is required as to whether, starting from the primary cited invention, a person skilled in the art could easily have arrived at the claimed invention (for example, examination of whether something exists that can provide sufficient motivation when applying a secondary cited invention to the primary cited invention).
Also, state in the Examination Guidelines that the fact that the problem of the claimed invention is novel and is of a kind that a person skilled in the art would not ordinarily conceive can be one circumstance in the direction of not denying inventive step.
The Prohibition on Omitting Reasoning When Applying Well-Known Technology
State in the Examination Guidelines that the examination of whether reasoning is possible (examination of whether there is a teaching away from applying the well-known technology, etc.) must not be omitted merely on the ground that the technology is well known.
Prevention of Hindsight
State in the Examination Guidelines that, because inventive step is assessed after knowledge of the claimed invention has been obtained, examiners must take care not to fall into hindsight, such as (a) it appearing that a person skilled in the art could easily have conceived the invention, or (b) being led by the claimed invention when identifying the cited invention.
Also, as to (b), expressly state in the Examination Guidelines on novelty and inventive step that examiners must note that, when understanding the cited invention after obtaining knowledge of the claimed invention, they may fall into hindsight by misconstruing the cited invention in accordance with the context of the claimed invention, and that the cited invention should be understood on the basis of the evidence in which it is shown (in the case of a document, in accordance with the context of that document).
Cases in Which Inventive Step Is Denied as “Selection of an Optimum Material, Design Modification, etc.”
With regard to situations in which inventive step is denied as “selection of an optimum material, design modification, etc.,” also state that, when applying a secondary cited invention to the primary cited invention, such application may be carried out while making design modifications, etc. within the ordinary creative ability of a person skilled in the art.
Specifically, state in the Examination Guidelines that “design modifications, etc. that constitute the exercise of the ordinary creative ability of a person skilled in the art are also considered, with respect to the differences, when applying a secondary cited invention to the primary cited invention.”
Examples of Teaching Away
Taking into account the descriptions in other countries' examination guidelines and trends in court decisions, describe in the Examination Guidelines the following types of secondary cited inventions as examples of teaching away.
A secondary cited invention that, if applied to the primary cited invention, would be contrary to the purpose of the primary cited invention.
A secondary cited invention that, if applied to the primary cited invention, would cause the primary cited invention not to function.
A secondary cited invention whose application is excluded by the primary cited invention and whose adoption is considered inconceivable.
A secondary cited invention that is described as an example that does not exhibit an operation or effect with respect to the problem sought to be solved by applying it to the primary cited invention, and that a person skilled in the art would not ordinarily consider applying.
Examples of Secondary Considerations
Taking into account descriptions in other countries' guidelines as well, add to the Examination Guidelines “the fact that its realization had been desired for a long time, etc.,” which is mentioned as a secondary consideration in the guidelines of Europe, the United States, China, and Korea and in the PCT Guidelines, and expressly indicate that secondary considerations may also be considered in Japan in the same manner as in other countries.
English translation of the Japanese article.
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Updates and corrections
This log starts on 30 September 2026. Display and classification checks are distinct from a review of the legal analysis.
2026-09-30 — Presentation update: added the article type, this change log and a link to consultation options. The existing article text was preserved.
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