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Publication of “Case Study on Inventive Step

June 30, 2010
Japan Patent Office

The Examination Guidelines for Patent and Utility Model (hereinafter referred to as “the Examination Guidelines”) are summaries of basic concepts regarding the application of relevant laws such as the Patent Act and have been well-established as standards for examination by examiners. Although the Examination Guidelines do not fall into a law and bylaws, reference to the Examination Guidelines enables examiners to examine patent applications in line with the purpose of the Patent Act in a fairer and more efficient manner. At the same time, applicants are also able to understand the standards for examination on the requirements for patentability and appropriateness of amendments more accurately so that they are able to go through more appropriate procedures in preparing descriptions and responding to a notification of reasons for refusal.

In addition, the Examination Guidelines are expected to play a role as a means to clarify policies regarding the application of the Patent Act by reflecting the technical, industrial and social trends into the operation of patent system on a timely basis. They have in fact played such a role. In an approach toward international harmonization, the Examination Guidelines can be one of the means for comparing and harmonizing the patent system and operation of various countries, although there are certain restrictions. Moreover, it is also necessary to rapidly respond to the revision of the patent system and new court decisions.

In the 3rd meeting of the Committee on Examination Standards, Industrial Structure Council held in June 30, 2009, the committee on Examination Standards, in inspecting the Examination Guidelines, reached a consensus that it should not be revised unnecessarily in light of stable granting of patent rights and stability of granted patents, whereas the Examination Guidelines has been required to promptly review depending on the revision of the system, new court decision, the developments of new technology, and the change in the international situation. The Committee concluded that, as a result of the inspection, it will not only revise the Examination Guidelines when necessary, but also offer the materials which will make it easier to understand the Examination Guidelines.

This material covers court decisions on inventive step and summarizes the points to note in applying the Examination Guidelines to specific cases. This is to be provided to (assistant) examiners and system users as reference to help them better understand the Examination Guidelines. However, it should be noted that the content of holding and summary of each court decision cannot be generalized directly.

We sincerely expect that this material will contribute to better understanding of the Examination Guidelines, and improvement in stability of patents and predictability of examination.

Case Study on Inventive Step(PDF:224KB)

[Last updated 30 June 2010]

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Japan Patent Office,

E-mail : PA2A10@jpo.go.jp