May, 2018｜News Letter

1. How should Problem to be Solved by Invention be Found in Examining Support Requirement?

Tsuno Co., Ltd. v. Commissioner of JPO, Case No. 2017 (Gyo-Ke) 10129 (Decision rendered on May 24, 2018)

The Patentee, Tsuno, obtained a patent relating to a rice milk in 2015. Against the Tsuno’s patent, an Individual (Opponent) filed an opposition with the JPO in 2016. Having reviewed the opposition, the JPO notified the reason for revocation to Tsuno, and Tsuno filed an argument and a demand for corrections, against which the Opponent filed a counterargument. Thereafter, the JPO reviewed the case again and notified the reason for revocation again, and Tsuno filed an argument and a demand for corrections again. The JPO admitted the corrections, but rendered a decision of revoking all the corrected claims 1 to 4 in 2017 on the grounds that the corrected claims did not satisfy the support requirement. Tsuno filed an appeal against the JPO’s decision to the IPHC in 2017.

The corrected Claim 1 of the Tsuno’s patent at issue claims as follows:
A rice milk containing a rice saccharified material and rice oil containing 1 to 5% by mass of γ-oryzanol, wherein the rice milk contains 0.5 to 5% by mass of the rice oil.

One of the main issues in this case related to how the problem to be solved by the invention should be found in examining support requirement. The IPHC answered to the issue as follows:

In the JPO’s decision, the JPO found that the problem to be solved by the invention was to provide a rice milk having a significant difference from the rice milk of example 1-1, which corresponded to the state of the art at the time of the filing of the invention, in body (milk feeling), sweetness and good taste. On the basis of the above finding, the JPO decided that the claimed invention at issue did not satisfy the support requirement.

However, the IPHC first ruled as stated below:

The support requirement was an issue on the relationship of the claims and the disclosure of the specification, and thus the requirement should be primarily considered on the basis of the claims and the disclosure of the specification, which should be applied to the finding of the problem to be solved by the invention, as well, unless there was an exceptional circumstance that no description was found in the specification about the problem at all. Accordingly, the state of the art at the time of filing of the invention should be only supplementarily considered, and should not be fundamentally considered to recognize the problem. In other words, it was sufficient to recognize the problem according to the description of the specification in examining support requirement insofar as the problem could be found from the description of the specification, and it was not necessary or adequate to recognize a problem different from the problem described in the specification with taking into consideration well-known and known techniques.

On the basis of the above ruling, the IPHC overturned the above JPO’s decision as stated below:

On the basis of the description of the specification, it could be clearly found that the problem was to provide a food containing a rice saccharified material and having body, sweetness and good taste, and thus no reason was found to re-recognize or further limit the problem as “to provide a rice milk having a significant difference from the rice milk of example 1-1 in body (milk feeling), sweetness and good taste” on the basis of the state of the art at the time of the filing of the invention. Therefore, it was not appropriate that the JPO found the problem as “to provide a rice milk having a significant difference from the rice milk of example 1-1 in body (milk feeling), sweetness and good taste”.

Conclusively, the IPHC upheld the Tsuno’s appeal, and cancelled the JPO’s decision.

An appeal to the Supreme Court was NOT filed against this decision, and thus the decision is final and binding.

K&P’s Comments This decision provides a clear rule to recognize the problem to be solved by the invention in examining support requirement. That is, the problem should be recognized on the basis of the description of the specification, and the state of the art or well-known and known techniques should not be considered, in principle.

(by Katsumasa OSAKI, Patent Attorney)

In May 2018, the IPHC handed down 15 decisions including the above case on patent, and overturned the previous decisions in 3 cases.

In May 2018, the IPHC handed down 1 decision on trademark, which maintained the previous decision.

In May 2018, the IPHC handed down 2 decisions on industrial design, both of which maintained the previous decisions.