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The JPO published a report on the Inventive Step Review Conference 2007 held by Inventive Step Review Committee of Japan, a committee of attorneys, patent attorneys, Japan Patent Office (JPO) examiners, and others from various industries. In the conference, the committee reviewed the examinations for inventive step in ten cases from mechanical, electrical, chemical, and biological fields and summarized the notable points. We would like to introduce the major points in the summary.

1. The combination of cited documents (common ground of technical field)
The Examiners often allege that an invention could have easily been made by a person skilled in the art having ordinary creativity from a combination of cited documents that share the same technical field. In such cases, it is difficult to assert an inventive step by only arguing that the inventions claimed in the cited documents are different from each other.

2. Matters of design
Selecting suitable materials, optimizing the range of values and substituting equivalents from publicly known material are often deemed to be merely a matter of design. In such cases, the Examiner often asserts he cannot find an inventive step without much explanation about the combination of cited documents. If the scope of invention could be anticipated or expected by a person skilled in the art, the invention is often considered to be merely a matter of design.

3. Characteristic effects
Inventions in the mechanical and electrical fields often produce predictable or general effects. Therefore, instead of asserting the unpredictable characteristic effect, it is more effective to explain why the cited references cannot be combined or assert the effect which cannot be obtained by simply combining the cited references. On the other hand, the inventions in chemical field often produce unpredictable characteristic effect. In many cases, however, such characteristic effect is produced only in part of the invention indicated in the claims. In such cases, the claims should indicate the scope of such unpredictable effect.

4. Hindsight
Generally, the Examiner can combine the cited references after understanding the invention, if he or she can explain why a person skilled in the art can achieve the invention by combining the cited documents. To assert on the hindsight, the applicant must argue not only that the cited documents were combined after understanding the invention but also explain specifically about the hindsight.

 For more information, please refer to the homepage below:
“Regarding Report of the Inventive Step Review Conference 2007” (In Japanese only)
http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/toushin/kenkyukai/sinposei_kentoukai.htm