[Suit against Appeal Decision on Refusal of Design Patent Application]

[Key issue] Estoppel

A case in which the court rescinded a JPO’s decision, stating that it cannot be said that the fact that an applicant changes its allegation in the appeal seeking rescission of the JPO decision from its allegation made in the examination and trial stages is not allowed due to estoppel.

[Title of the patent] “Antipruritic agent”

[Key issue] Whether the application for registration of patent term extension (PTE application) falls under Article 67-3, paragraph (1), item (i) of the Patent Act

Court rescinded a JPO’s appeal decision which maintained an examiner’s decision to reject a PTE application.  The examiner’s reason for rejecting the PTE application was that the approved drug having nalfurafine hydrochloride as the active component was not contained in the patent invention having nalfurafine as the active component and therefore it could not be found that upon working the patent invention, it was necessary to receive the disposition specified by Cabinet Order as set forth in Article 67, paragraph (2) of the Patent Act.

[Title of the patent] “(Meth)acrylic acid ester copolymer”

[Key issue] Inventive step (Article 29, paragraph (2) of the Patent Act)

Court rescinded a JPO’s revocation decision, stating that the patent invention could have been easily conceived of by a person skilled in the art based on Cited Invention 1, since there was little motivation to improve Cited Invention 1 to solve the problem of the patent invention because the technical field and the problem are not necessarily the same for the patent invention and Cited Invention 1 and according to the disclosure of Citation 1 (Exhibit Ko 7), there is little reason for a person skilled in the art to select the two kinds of monomers, a monomer containing epoxy groups and a monomer containing hydroxy groups, from among multiple combinations disclosed in Citation 1.

The JPO issued “Handbook for Trial and Appeal System in Japan” which introduces a trial and appeal system in Japan.

The IPHC published an English translation of a Ground Panel Case (2019(Ne)10003, Appeal Case of Seeking Injunction and Compensation against Patent Infringement).

[Title of the invention] METHOD AND DEVICE FOR FORMING AND DISTRIBUTING REAL TIME INTERACTIVE CONTENTS ON WIRELESS COMMUNICATION NETWORK AND INTERNET

[Key issue]
Present Invention and Cited Invention differ from each other in that Present Invention sends “at least an identifier of a single receiver” in addition to the “expression of the second content”, whereas Cited Invention can select a “rank” in which the performer will participate by inputting the “rank” of a “performance group” (“Different Feature”). The issue is whether or not “at least an identifier of a single receiver” could have been easily conceived from “rank” of a “performance group”.
The court rescinded the JPO decision by stating that the JPO’s judgment on whether or not the Different Feature could have been easily conceived has an error.

[Title of the patent] “PROCESS FOR PACKAGING WINE IN ALUMINUM CANS”

[Key issue] Support requirement (Article 36, paragraph (6), item (i) of the Patent Act)
Court dismissed the Plaintiff’s claim for rescission, stating that the Invention cannot be acknowledged as conforming to the support requirement since it cannot be recognized from the description of the Detailed Description of the Invention and the common general technical knowledge as of the priority date that a person skilled in the art could recognize that the problem to be solved by the Invention could be solved over the whole numerical ranges of a chloride level of less than 300 ppm and a sulfate level of less than 800 ppm that were encompassed into the Invention.