TOPICS

“Aminosilane, Precursor for Forming Silicon-Containing Film,                                                                             and Composition for Forming Silicon-Containing Film”

Overview:

This case concerns an action seeking the revocation of a trial decision that dismissed a request for a patent invalidation trial. The court dismissed the plaintiff’s claim.

▶Link to a summary and full text of the trial decision (Japanese)

Main Issue:

Whether “diisopropylaminosilane” can be recognized as the chemical substance described in Plaintiff’s Exhibit 1.

Court’s Ruling:

It goes without saying that for an invention of a product to be considered as being described in a “publication,” the structure of said product invention must be disclosed therein. In view of the fact that an invention entails the creation of a technical idea (Patent Act Article 2(1)), however, it is required that the technical idea of the invention be disclosed such that those skilled in the art, upon exposure to the publication, can implement the technical idea based on the common technical knowledge at the time the patent application was filed without the need to exercise ordinary creativity such as further thought or routine experimentation.

In particular, at least in the field of chemistry, it is possible to formally indicate the chemical formula or name of a chemical substance, irrespective of whether a manufacturing method or other means of obtaining it has been discovered. Therefore, for a publication to be considered as disclosing the technical idea of an invention of a chemical substance, it should generally not only disclose the structure of the chemical, but also include descriptions sufficient to enable an understanding of the manufacturing method or other means of obtaining the substance. Additionally, if the publication does not contain descriptions sufficient to enable an understanding of the manufacturing method or other means of obtaining the substance, those skilled in the art should be able to derive, upon exposure to the publication, the manufacturing method or other means of obtaining the substance based on common technical knowledge at the time the patent application was filed, without the need to exercise their ordinary creativity such as further thought or routine experimentation.

…It cannot be said that those skilled in the art could have derived a manufacturing method or other means of obtaining diisopropylaminosilane before the priority date of the present case and upon exposure to Exhibit 1, based on common technical knowledge before the priority date of this case, without the need to exercise their ordinary creativity such as further thought or routine experimentation.

Therefore, “diisopropylaminosilane” cannot be recognized as the chemical substance of the invention described in Plaintiff’s Exhibit 1, and as an “invention described in a publication” under Patent Act Article 29(1)(iii).

Comments:

Although the plaintiff presented experimental results and argued that “it was possible to produce diisopropylaminosilane as at the priority date of the present case,” the court rejected this argument, stating that “even in view of these specific details of the experiment, it cannot be recognized that those skilled in the art could have derived a manufacturing method or other means of obtaining the substance without the need to exercise their ordinary creativity such as further thought or routine experimentation.”

Kazuyuki YOSHIZUMI