The patent grant ratio has been increasing year by year recently in Japan. For example, according to the Japanese Patent Office (JPO), the ratio went from 48.5% in 2006 to 60.5% in 2011 in the examination stage. In particular, since 2009, it has continued to rise sharply.
At the stage of reconsideration before appeal where the former Examiner examines the appeal case when amendments have been submitted, the grant ratio increased from 45.0% in 2006 to 61.3% in 2011.
In the appeal stage where three Appeal Examiners examine appeal cases for which amendments have not been submitted as well as appeal cases for which the former Examiner did not grant patents even after reconsidering the applications, the grant ratio increased from 43.3% in 2006 to 54.0% in 2011.
In the examination stage, the number of grant cases was 220,495 in 2011. The number of grant cases both at the stage of reconsideration before appeal and the appeal stage was 22,813 in 2011. Therefore, the total number of grant cases at the JPO was 243,308 in 2011.
For lawsuits brought before the Intellectual Property High Court (IPHC) against Appeal Decisions of Rejection, the revocation ratio of such Appeal Decisions increased from 14.2% in 2006 to 33.1% in 2009. However, it then dropped back down to 20.3% in 2011. As the grant ratio increases at the JPO, it can be expected that the revocation ratio of Appeal Decisions of Rejection at the IPHC will become stable.
According to such data, we may say that it has become easier for applicants to get patents in Japan. Below, we talk about recent trends concerning judgments on inventive step before the IPHC and the examination practice of the JPO.
Recent Trends concerning Judgments on Inventive Step before the IPHC
The judgments of the Courts, including the IPHC, seem to change depending on the times. Until around 1998, it was considered necessary that there be a suggestion or motivation for combining prior art to deny the inventive step. However, it gradually became common to consider it easy to combine prior art when they belong to the same technical field. The Courts began to judge inventive step very strictly starting around 2003. Thereafter, in response to criticism from practitioners who felt it was too severe, they started reconsidering the judgment on inventive step from around 2004. Beginning in 2007, the Courts issued judgments one after another which consciously excluded hindsight. The judgment of Case No. Hei 20 (Gyo-ke) 10096 issued on July 28, 2009 is symbolic in that it states that the following factors should be considered when we judge whether or not it is possible to easily arrive at an invention.
- It is essential to grasp the problem to be solved with accuracy.
- In order to exclude ex post facto and illogical thinking, when attempting to grasp the problem to be solved, we should try to prevent the elements of “means to solve” and “solved results” from entering into the process unconsciously.
- Furthermore, not only the proof of the assumption that a person skilled in the art tried to attain the feature of the invention but the existence of a suggestion that he/she should have tried to attain the feature of the invention is also necessary.
The judgments issued by the IPHC after the above judgment of 2009 have taken the problems to be solved by the prior art into consideration and tend to not deny the inventive step when the problems to be solved by the prior art are different even if the prior arts belongs to the same technical field.
Examination Practice concerning Inventive Step before the JPO
It is said that it takes some time for Examiners to begin examining applications that take the judgments issued by the IPHC. However, the rise of the grant ratio at the JPO seems to concurrently follow the IPHC. We think that this is not because the JPO is aligning itself with the IPHC, but because the JPO is sensitive to the social needs at the time just like the IPHC.
Examiners and Appeal Examiners seem to be kind to applicants these days. For example, they accept applicants’ requests for interviews including telephone interviews. They also sometimes contact applicants and suggest draft amendments. We feel that the JPO is trying to help applicants get good patents.
These changes seem to have contributed to the increase of the grant ratio at the JPO in recent years.
Both the JPO and the IPHC are tending to grant more patents than before. Therefore, it has become easier to get patents in Japan. This trend can also be seen for patent applications from abroad. It was often said that it is more difficult to get patents in Japan than in the United States and Europe. However, in recent years, the grant ratio in Japan has been higher than in the United States and Europe.
In addition to the high grant ratio, the scope of the claims is also important for applicants. The JPO shows a tendency to judge the support and enablement requirements more leniently for applicants than in the past. Therefore, we can get stronger patents with a more reasonable scope of the claims these days and, as a result, we may say that it has become easier than ever for patent holders to enforce their patent rights in Japan.