[Decision of the IP High Court dated November 10, 2020 (2020 (Gyo-ke) No.10005) - Appeal case of seeking revocation of the trial decision]

Summary of the Judgment

Even if there is no description in the specification of an earlier application, the invention of the earlier application can be found by referring to the common general technical knowledge for a person skilled in the art in understanding the invention of the earlier application.  However, an invention that is abstract or whose technical contents are insufficiently disclosed even after referring to the common general technical knowledge for the person skilled in the art does not constitute a statutory "invention" as provided in Article 29-2 of the Patent Act (Secret Prior Art) and does not have the effect of excluding applications filed later.

If the technical content of the invention is not so structured as to enable any person with ordinary knowledge and experience in the technical field can repeatedly work the invention and produce the intended technical effect, the invention is incomplete as an "invention" and does not constitute the statutory "invention" as provided in Article 29-2 of the Patent Act.

1.     The case

The plaintiff applied for a patent and received a decision of refusal on the grounds that the invention is identical with an invention (the "Earlier Invention") of another patent application (the "Earlier Application") filed six days prior to the priority date.  The plaintiff filed a request for trial against the decision of refusal, but the trial decision was rendered unsuccessful, so the plaintiff filed this lawsuit seeking revocation of the trial decision.

The plaintiff's main ground for rescission is that the trial decision overlooked the fact that the Earlier Invention is incomplete as an invention and erred in finding the Earlier Invention .

2.     Judgment

(1) Method of finding an earlier invention

The IP High Court held the interpretation of the invention of the earlier application in Article 29-2 of the Patent Act and the method for finding it as follows:

The term "invention" used in Article 29-2 of the Patent Act refers to an invention that can be recognized from the description in the specification, etc. of the earlier application or equivalents of such descriptions.  It is understood that the term "equivalents of such descriptions" means that which can be derived from the descriptions by referring to the common general technical knowledge at the time of filing.

Therefore, even if there is no description in the specification of the earlier application, the invention of the earlier application can be found by taking into account the common general technical knowledge for a person skilled in the art in understanding the earlier invention of the earlier application.  However, an invention that is abstract or whose technical contents are insufficiently disclosed even after referring to the common general technical knowledge for the person skilled in the art does not constitute a statutory "invention" as provided in Article 29-2 of the Patent Act and does not have the effect of excluding applications filed later.  In addition, if the technical content of the invention is not so structured as to enable any person with ordinary knowledge and experience in the technical field can repeatedly work the invention and produce the intended technical effect, it is incomplete as an "invention" and does not constitute the statutory "invention" as provided in Article 29-2 of the Patent Act.

(2) Specific decision on the case

The IP High Court concluded that the Earlier Invention constitutes the statutory "invention" as provided in Article 29-2 of the Patent Act because the technical content of the Earlier Invention is so structured as to enable any person with ordinary knowledge and experience in the technical field of the invention can repeatedly work the invention and produce the intended technical effect.

3.     Review

The decision of the judgment is based on the premise that the effect of the invention should be repeatedly reproduced under certain conditions since an invention is based on the laws of nature.  Based on that premise, the IP High Court found that the Earlier Invention is specifically disclosed so as to enable the person with ordinary knowledge and experience in the technical field can repeatedly work the invention.  The specific method of finding an earlier invention in the judgment may also be helpful in finding prior invention when determining novelty and inventive step of an invention.