Public Sales Create Grounds for Invalidation Due to Lack of Inventive Step
On June 17, 2005, the Tokyo District Court decided that a product that reveals most of the patented invention when analyzed can be used to invalidate a patent on lack of inventive step grounds. The Intellectual Property High Court affirmed this ruling on October 26, 2005.
The Defendant is a company manufacturing and selling a low frequency therapeutic apparatus (“Defendant Product”). The Defendant developed the Defendant Product jointly with Company A.
The Plaintiff was an employee of the Company A and was assigned to prepare a patent application covering the Defendant Product. However, the Defendant and Company A decided not to file the application, and the Defendant sold the Defendant Product to the Company B without a non-disclosure agreement. Afterward, the Plaintiff applied for a patent on his own behalf. After the patent was granted, the Plaintiff sued the Defendant, asking it to stop selling the Defendant Product and to pay the compensation. The Defendant argued that the sales of the Defendant Product to Company B made the configuration of the Defendant Product public and that the patent was invalid for lack of an inventive step. The Defendant further argued that because the patent was invalid, it cannot be enforced.
The Intellectual Property High Court ruled in favor of the Defendant and stated that even if significant analysis were required to determine the configuration of the product and the products were sold only to a specific consumer, sales the product can be grounds for invalidation for lack of an inventive step.
The Defendant is a company manufacturing and selling a low frequency therapeutic apparatus (“Defendant Product”). The Defendant developed the Defendant Product jointly with Company A.
The Plaintiff was an employee of the Company A and was assigned to prepare a patent application covering the Defendant Product. However, the Defendant and Company A decided not to file the application, and the Defendant sold the Defendant Product to the Company B without a non-disclosure agreement. Afterward, the Plaintiff applied for a patent on his own behalf. After the patent was granted, the Plaintiff sued the Defendant, asking it to stop selling the Defendant Product and to pay the compensation. The Defendant argued that the sales of the Defendant Product to Company B made the configuration of the Defendant Product public and that the patent was invalid for lack of an inventive step. The Defendant further argued that because the patent was invalid, it cannot be enforced.
The Intellectual Property High Court ruled in favor of the Defendant and stated that even if significant analysis were required to determine the configuration of the product and the products were sold only to a specific consumer, sales the product can be grounds for invalidation for lack of an inventive step.