[IP Practice Online] “20 inventive-step issues, 3 min each” (Authors; supervisor: Hideki Takaishi)
更新日：2 時間前
Article information
Categories: Patents
Topics: Inventive step / Design choices / Motivation and teaching away
Published on this website: 2026-09-29
[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 with the problem cannot freely be abstracted away. Assess abstraction of the configuration and of the problem separately.
5. Inherent properties: Practice seems stricter in 2021–2024 than 2018; the framework is unchanged.
6. Retaining C may support teaching away from its removal/change. Examine correlation and whether the problem calls for complete solution, improvement or an equivalent alternative.
7. Separately identified differences may be interdependent; changing one may affect the other.
8. For replacement/removal, examine whether C is essential to the cited problem. Its absence from an independent claim may rebut necessity; check dependent claims too.
9. Suggestions can outweigh shared fields/functions. Literature on problems or technical needs known at filing can establish motivation.
10. Primary reference is crucial: conflicting problems impede reaching the invention.
11. Design choice is a separate invalidity route. Describe configuration–problem/effect correlations initially, but balance this against narrower interpretation and new-matter risks in divisionals.
12. The JPO more readily credits quantitatively remarkable effects. Courts are stricter for obvious identical configurations, except claimed effects, etc.; qualitative differences are stronger.
13. Contrary literature can rebut an allegedly uniform technical understanding. Well-known art may both fill differences and establish motivation.
14. Avoid slogans: argue why each change, or making both together, is non-obvious.
15. Mere suitability-for-use wording may not limit scope: other uses may infringe, while novelty/inventive step of the remainder must also be checked.
16. A subcombination’s relationship limits scope only if it limits its own structure/function. Misleadingly apparent limitations may lack clarity. Takaishi will offer his September 2026 article on request.
17. Strong parameter–problem correlation must be described initially.
18. A narrower selection tied to a different problem is stronger. Expressly listed alternatives face difficulty, though distinctive problems/effects may matter.
19. Disclaimers avoiding prior-art overlap may be allowed without an expressly disclosed exclusion. Initially state that preferred features may also be absent.
20. Claiming effects remains worth considering under the unchanged framework, despite stricter treatment of inherent effects. Address support and enablement.
Originally posted on LinkedIn: https://www.linkedin.com/feed/update/urn:li:share:7510495749877653505/
