TOPICS

“Vehicle”

 Overview:

This case pertains to a Japan Patent Office (JPO) trial decision in which it was determined that the invention according to claim 1 as amended (hereinafter, “the amended invention of this case”) could have been easily invented by a person skilled in the art on the basis of the cited invention, well-known matters and well-known technology. The court overturned the trial decision to dismiss a request to appeal the decision of rejection as lacking grounds, not indicating reasons for the determination, and being incorrect.

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

Main Issue:

Equivalence of the JPO trial decision’s determination that “no exceptional difficulty is recognized in making the vehicle of the cited invention a vehicle or drone configured so as to enable rotation at a leaning orientation”.

Court’s Ruling:

Concerning whether there was difficulty in making the vehicle of the cited invention “a vehicle configured so as to enable rotation at a leaning orientation”

… Given that the cited invention is directed to solving the problem that power that can be supplied from a battery is small when the battery’s temperature is low, there is insufficient reason to recognize that “a vehicle configured so as to enable rotation at a leaning orientation” typically poses the problem that the power that can be supplied from an energy storage device (battery) is low; therefore, it cannot be recognized that the skilled person would be motivated to make “a vehicle configured so as to enable rotation at a leaning orientation” due to the shared problem of the cited invention and the problem typically posed by “a vehicle configured so as to enable rotation at a leaning orientation”. … Assuming that to be the case, the determination of the JPO trial decision for this case should be considered as lacking grounds, not indicating reasons for the determination, and being incorrect. …

Concerning whether there was difficulty in making the vehicle of the cited invention a drone

… The vehicle of the cited invention, which travels over the ground on rotating wheels, and the drone of the amended invention of this case, which flies through the air due to rotating blades, differ from each other essentially in terms structure and movement mode. … Additionally, the JPO trial decision for this case does not give evidence sufficient to recognize that a drone is provided with “an engine, an electric motor for generating power, an energy storage device, and an electric motor for propulsion”, and although it asserts that a drone “is typically small in a similar manner to a vehicle configured so as to enable rotation at a leaning orientation, and an energy storage device is also small” as grounds for determining that no exceptional difficulty can be recognized in making the vehicle of the cited invention a drone, it does not give evidence sufficient for this to be recognized. … Assuming that to be the case, …the determination of the JPO trial decision for this case should be considered as lacking grounds, not indicating reasons for the determination, and being incorrect.

The determination above of the trial decision for this case forms a process…for determining the conceptual ease of the amended invention of this case; therefore, the determination described above being incorrect means the determination of the conceptual ease of the amended invention in the trial decision of this case would also be incorrect .

Comments:

In this lawsuit, the “insufficiency of reasons in the decision” (Patent Act Article 157(2)(iv)) are not necessarily the direct point of contention. However, the court judged that “the determination of the JPO trial decision for this case…lacking grounds, not indicating reasons for the determination”, and this also appears to suggest insufficiency of reasons in the decision. Concerning the reasons to be stated in the JPO trial decision, a Supreme Court precedent (1979 (Gyo-Tsu) 134) ruled that: “unless there is a special reason, such as in a case giving a determination of remarkable facts for persons of ordinary skill in the art to which an invention pertains, such as facts or the like that establish the common technical knowledge or technological level of such persons, grounds for a final determination in an examination trial must be explicitly shown based on the facts established by evidence”. While it is unclear whether this court decision is directly based on the general meaning of this precedent, nevertheless, it is conceivable that the court determined that the presenting of evidence supporting the facts established by the evidence in the JPO trial decision, as well as the logical structure for arriving at the conclusion, were not sufficient.

Yuuji WADA