Inventive Step in Japanese Patent Law
An English overview of Hideki Takaishi's Japanese materials on inventive step. The full Japanese commentary includes case references, judgment PDFs, articles, lectures and videos.
Four points for analysis
1. Motivation to combine: identify what would be changed in the primary reference and why, using the prior art and common general knowledge at the relevant time. Avoid hindsight. A difference in the stated problems does not, by itself, settle the question.
2. Factors discouraging a combination: identify the function that a proposed modification would defeat, and the evidence for that conclusion. A disadvantage must be weighed against reasons a skilled person might nevertheless adopt the modification.
3. Unpredictable, significant effects: examine what effects a skilled person could have predicted from the claimed configuration and the common general knowledge at the filing or priority date. The Japanese commentary discusses the Supreme Court's August 27, 2019 doxepin-derivative judgment, which quashed and remanded the lower judgment.
4. Numerical limitations and parameters: distinguish identifying the parameter from selecting a particular range. Consider measurement methods, the relationship to the problem, effects inside and outside the range, and the support and clarity requirements.
Articles and materials
These points summarize the discussion in Hideki Takaishi, 「進歩性の全論点網羅」, Patent, Vol. 75, No. 1 (2022), pp. 22–39.
Read the full Japanese commentary and access the source materials