Episode 32

In Episode 7, we discussed the point that excessive descriptions of the effects of an invention when drafting a patent specification can narrow the scope of rights.
Regarding the relationship between an invention's inventive step and its effects, a court decision (Tokyo High Court, Case 2002 (Gyo-Ke) No. 460, Decision of March 23, 2004) stated, "The inventive step of an invention should, in principle, be judged based on its objective structure. The very act of attempting to solve a specific problem through that structure is, in the end, merely the inventor's subjective intention. Affirming patentability based on the existence of such an intention would ultimately result in the granting of multiple patents with objectively identical structures, and is therefore unacceptable. However, there may be exceptional circumstances in which a patent may be granted for an invention whose structure itself is easily conceivable, such as when an effect is discovered that would not have been easily anticipated or discovered by a person skilled in the art."
Regarding the relationship between the inventive step and effect of this invention, the Supreme Court ruled (Supreme Court Decision No. 69 of 2018 (Gyo-Hi) of August 27, 2019, Third Petty Bench, Shumin No. 262, p. 51) that "regarding the existence of an inventive step in a patented invention relating to the pharmaceutical use of a compound, the court below denied that the effect of the patented invention was unpredictable and significant."
While this ruling was made in the specific field of "whether or not a patented invention relating to the pharmaceutical use of a compound involves an inventive step," the basic concept can also be applied to determining inventive step in patent application examination.
The way the effect of the invention is described in the specification will differ depending on whether the feature of the invention lies in the basic configuration or in the significant effect achieved by that configuration.
When drafting the specification, careful consideration should be given to whether the effect of the configuration of the invention could have been predicted by a person skilled in the art at the time of filing, and whether it is a significant effect that goes beyond the range of effects that a person skilled in the art could have predicted from the configuration. If such a significant effect exists, it should be described in the specification.
Currently, infringement of equivalents is being examined in patent infringement lawsuits (see Episode 23). In order to make it easier to recognize infringement by equivalents for alleged infringing products that have different configurations from the claimed invention, it is considered effective to state the advantageous effects obtained by the claimed invention in order to clarify the second requirement of equivalents (having the same functional effect). Making it easier to recognize infringement by equivalents will lead to expanding the scope of rights.