TOPICS

“Method for Electrochemical Reduction of Carbon Dioxide”

Overview:

This case is an action seeking rescission of a Japan Patent Office (JPO) trial decision that dismissed an appeal against an examiner’s decision of refusal. The Intellectual Property High Court rescinded the trial decision.

▶Summary of Judgement and Link to Full Text (Japanese)

Main Issue:

Whether there was illegality (a procedural violation) in the appeal proceedings for this case in violation of Article 159(2) and Article 50 of the Patent Act.

Summary:

The examiner’s decision of refusal held that the subject application should be rejected based on the grounds stated in the Notice of Grounds for Rejection; i.e., based on finding that a sodium carbonate solution or an alkanolamine solution corresponds to the “absorbent” of the claimed invention.

In contrast, the JPO trial decision found that the “mixed solution containing formic acid and sodium formate” is equivalent to the “absorbent” of the amended invention and the claimed invention, and on that basis held that the subject application should be rejected.

Although the examiner’s decision of refusal and the JPO trial decision found different substances as the “absorbent” of the claimed invention, the sodium carbonate solution or alkanolamine solution and the “mixed solution containing formic acid and sodium formate” are used for entirely different processes and purposes in Cited Reference 1, and are not in a relationship of substitutes or equivalents used in the same process. Accordingly, rejecting the subject application by finding the “mixed solution containing formic acid and sodium formate” as the absorbent constitutes entrapment of the plaintiff. Therefore, it was appropriate to notify the plaintiff of this finding and provide an opportunity to submit a written opinion and make amendments. This situation corresponds to “where a reason for refusal that is different from the reason for the examiner’s decision is found” (Article 159(2) of the Patent Act). Furthermore, such a procedural violation of failing to provide an opportunity for amendment is construed by its nature to affect the conclusion of the trial decision.

Therefore, the trial proceedings in this case involve an illegality in contravention of Article 159(2) and Article 50 of the Patent Act, and this constitutes a ground for rescinding the JPO trial decision.

Comments:

The defendant (JPO) argued that “both the examiner’s decision of refusal and the trial decision determined that novelty was lacking based on the same invention derived from Example 2 of Cited Reference 1”. However, the Court dismissed the defendant’s argument, stating:

“Even if the example is the same, an invention where a sodium carbonate solution or alkanolamine solution corresponds to the ‘absorbent’ has a different configuration from an invention where a ‘mixed solution containing formic acid and sodium formate’ corresponds to the ‘absorbent’; thus, it cannot be said that both decisions were made based on the same cited invention.”

Kazuyuki YOSHIZUMI