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[IP Case Summary: Japan-Patent]2020 (Gyo-Ke) No. 10089 – Intellectual Property High Court (December 15, 2021)

“Child Safety Seat or Baby Carrier for Mounting on a Motor Vehicle Seat and Side Impact Bar for Such a Seat”

The Intellectual Property (IP) High Court overturned an invalidation trial decision by the Board of Examiners of the Japan Patent Office (JPO), and held the patent of concern invalid on the grounds that the claimed invention would have been easily conceived of.

Main Issue:
Whether or not the JPO was mistaken in their findings on matching features and differences, as well as in their decision on ease of conception, when the claimed invention was interpreted.

Summary of Conclusion:
The IP High Court reasoned that the finding on the gist of the claimed invention should be made based on the language of the claims, and that it is proper to interpret the terms of the claims based on their ordinary meaning in light of the common technical knowledge before the priority date in the technical field to which the claimed invention pertains. The court went on to establish that ultimately, the meaning of the claim terms can be interpreted as differing from ordinary meaning provided this is defined or explained in the specification or drawings, but that it is proper to interpret the claim terms as described above where there is no such definition or explanation.
The JPO’s decision found that the claimed “support member” corresponds to the “seat shell” and “flexible material capable of supporting a child”, which are understood from the common technical knowledge relating to seat shells, and interpreted the claimed seat shell as a constituent feature that differs from and is additional to the “seat shell” and “flexible material capable of supporting a child” of the prior art (common technical knowledge), inside of which would be disposed the “support member”.
Although the JPO’s decision referred to the specification to interpret the claimed “seat shell” as distinct from the prior art, and as a different member to the support member for supporting a child, the IP High Court held that the referenced paragraph cannot be said to support the JPO’s interpretation, since it neither discloses the “seat shell” differing from the prior art, nor anything about a support member. Further, the IP High Court was unable to find grounds in the claims nor in the detailed description of the specification to adopt the interpretation of the JPO’s decision. Consequently, the IP High Court was unable to accept the interpretation of the JPO’s decision.

Not infrequently, a mistake in finding the gist of a claimed invention results in a mistake in finding the matching features and differences in the prior art, and the present case may be considered one such example. If a decision by the JPO to maintain a patent is overturned by the IP High Court due to a mistake by the Board of Examiners in finding the gist of the claimed invention, as per the present case, it might also be considered possible to obtain a further decision to maintain the patent as valid provided the claims can be corrected so as to fall within the technical scope of the invention found by the JPO’s decision. We assume that the IP High Court’s decision also took this into consideration, as the court also assessed other grounds challenging the JPO’s decision but found no reason to overturn the decision based on such grounds.