[Article / Patents] Double standards in inventive-step assessment (Hideki Takaishi, Patent, June 2024)
Updated: 2 hours ago
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Categories: Patents
Topics: Inventive step / Design choices / Numerical limitations and parameters
Published on this website: 2026-09-29
[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, whether a difference is dismissed as a mere design choice or inventive step is recognized depends on how the numerical limitation or parameter contributes to “solving the problem of the invention.”
(1) Reasoning affirming inventive step: The problem is not publicly known, or the parameter strongly correlates with solving it.
IP High Court, Reiwa 2 (Gyo-Ke) 10044, […] (大鷹)
IP High Court, Heisei 31 (Gyo-Ke) 10011, […] (高部)
(2) Reasoning denying inventive step (design choice): The specification does not describe technical significance (correlation with the problem), and the choice is found to be one a skilled person can make as appropriate.
IP High Court, Reiwa 3 (Gyo-Ke) 10091, “Adhesive tape” (本多)
IP High Court, Reiwa 4 (Gyo-Ke) 10111, “Vehicle door beltline molding” (本多)
Inventive step can be strengthened by expressly describing in the original specification at filing not merely numerical ranges or parameters, but their technical significance (correlation): why they contribute to solving the invention’s problem.
Originally posted on LinkedIn: https://www.linkedin.com/feed/update/urn:li:activity:7510493831570669568/
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