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Decisions

The Japan Patent Office (JPO) provides professional English translations of trial/appeal decisions, decisions on oppositions, and Hantei (advisory opinions on the scope of industrial property rights) categorized by type, field, or other attributes of a case that help in the understanding of the law and its operation, for the purpose of improving and enhancing the international reach and quality of information provided on industrial property rights applicable in Japan.

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Table of Contents

Last Updated documents (January 2022)

1. Patents and Utility Models

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Topics Abstracts
Appeal 2019-003546 Japanese(PDF) English(PDF) Requirements for Claims A case in which it was judged that the application does not comply with the supporting requirement, on the grounds that it cannot be recognized that the invention of the application can solve a predetermined problem because the specification of the case describes "typical embodiments," but it cannot be recognized that the specification of the case discloses specific examples which can satisfy a predetermined glass composition as recited in Claim 1 of the application.
Appeal 2019-009046 Japanese(PDF) English(PDF) Requirements for Claims/Description A case which was judged to violate the enablement and support requirements on the ground that the energy generation principle of the case presupposes the existence of hydrino atoms, but the existence of the hydrino atom is contrary to the common general technical knowledge established as quantum mechanics, as the principal quantum number of a hydrogen atom needs to be a positive integer according to the common general technical knowledge established as quantum mechanics.
Appeal 2019-009557 Japanese(PDF) English(PDF) Inventive Step A case in which regarding an invention based on an international application entitled "METHOD OF PROVIDING TOBACCO-DERIVED PYROLYSIS OIL," it was judged that, although the Cited Invention differs in that it is not clear how a "tobacco pyrolysate" has been obtained, it would have been easy to adopt the technical matter of Cited Document 2.
Appeal 2019-010292 Japanese(PDF) English(PDF) Novelty, Divisional Application A case of decision that denied novelty according to the publication of the Great-Grandparent Application, for the reason that a judgment on retroaction of the filing date of the Parent Application cannot be made in the trial of the case because the examiner's decision that the Parent Application from which the present application was divided does not satisfy the requirements for division and the filing date thereof cannot go back to the filing date of the Great-Grandparent Application has become final and binding.
Appeal 2020-002773 Japanese(PDF) English(PDF) Inventive Step A case where inventive step is denied because, regarding the invention relating to a method for producing an elastomer, a different feature in which the Cited Invention specifies trace impurities contained in a solvent whereas the present invention does not specify impurities is not substantial, because the present invention is not recognized to exclude an aspect containing impurities.
Appeal 2020-003391 Japanese(PDF) English(PDF) Novelty, Amendment before Grant A case in which, relating to a point of an amendment made at the time of request for appeal that a predetermined operation of a performance device is "suppressed so that consumption current does not exceed an upper limit value", the amendment at the time of the request for appeal is dismissed and Examiner's decision is maintained on the ground that a constitution for making consumption current of an actual game machine not exceed a predetermined upper limit value certainly is not described in the description, which is addition of a new matter, and, in addition, the relevant amended invention does not have novelty from Cited Invention and thus the independent requirements for patentability are not satisfied.
Appeal 2020-005342 Japanese(PDF) English(PDF) Patent Eligibility A case of decision that denied applicability to an invention, regarding the present application which is an application including claims for a data structure, for the reason that the claims do not concretely specify information processing based on the "data structure" and only describe an "artificial agreement".
Appeal 2020-006497 Japanese(PDF) English(PDF) Secret Prior Art, Requirements for Description A case in which an invention for a dissimilar metal bonded material should not be rejected under Article 29-2 of the Patent Act on the ground that, while recognizing that the 10 to 120 nm thickness of the Ni plating layer of the present invention overlaps with the 10 to 800 nm thickness of the Ni plating layer of the Prior Invention, the present invention exerts a particular effect by specifying the upper limit of the thickness, and the difference in the upper limit of the thickness is a substantial difference.
Appeal 2020-006853 Japanese(PDF) English(PDF) Inventive Step A case of judgment that approved an inventive step in an invention relating to a method for obtaining a target transmission path, the judgment being that the Invention is not considered to be a well-known matter of art, for the reason that the Invention obtains a node residence time on the basis of load of a network node, while the Cited Invention does not include any description about obtaining a latency value from the load of a node.
Appeal 2020-007357 Japanese(PDF) English(PDF) Inventive Step Concerning a numerical value range that "the vibration damping body is filled in the hollow portion with a stress of 15 MPa or more and 55 MPa or less under a load in a laminated direction with respect to the laminated body," it was judged that although the Cited Invention is different in the point of "under no-load in the laminated direction," it could have been easily conceived considering a use state.
Appeal 2020-007606 Japanese(PDF) English(PDF) Novelty, Inventive Step A case in which the present invention lacks an inventive step, because the matters relating to the use of the composition stated in the present invention (steps of providing a therapeutic enclosed space and exposing a subject to said enclosed space) are not the matters specifying the composition itself, or even if the matters are determined as those specifying the composition.
Appeal 2020-007706 Japanese(PDF) English(PDF) Inventive Step A case in which it was judged that, regarding a different feature that, in the invention of the case after amendment, plasma processing is performed while rotating a substrate, whereas, in Cited Invention, rotating a substrate is not disclosed, but it is a well-known art to perform plasma processing while making a substrate rotate, and, therefore, the invention of the case after amendment does not have inventive step.
Appeal 2020-008197 Japanese(PDF) English(PDF) Inventive Step A case in which an inventive step of an invention relating to PT-DC therapy was denied based on the main cited reference and the secondary cited reference because although there is a difference in that the present invention specifies doses of active ingredients while the main cited reference does not clearly describe the doses, the secondary cited reference discloses the doses specified in the present invention.
Appeal 2020-009408 Japanese(PDF) English(PDF) Double patenting A case in which, regarding the invention of a case related to a game machine, it was judged that Same-day invention is one that indicates two options alternatively, there is no different feature between Same-day invention and the invention of the case when assuming that only the first option between the two options is the matter specifying the invention concerning the options, and therefore the two inventions are identical.
Appeal 2020-010043 Japanese(PDF) English(PDF) Inventive Step A case of judgment that denied an inventive step, regarding an invention relating to an antenna array, for the reason that the Invention specifies that an input part of a switch is coupled to a common node, which is an output part of a circuit, while the cited invention discloses a terminal which allows input and output of signals, and the flow of signals disclosed in the Invention can be easily implemented by referring to well-known arts.
Appeal 2020-011889 Japanese(PDF) English(PDF) Requirements for Claims Since with respect to the problem of "providing an electrocardiogram measuring garment capable of measuring an electrocardiogram with reduced noise during exercise motions," a configuration for reducing noise during exercise motions is not specified, it is judged that means for solving the problem is not reflected and thus the invention of the case does not meet requirement for support.
Appeal 2020-013425 Japanese(PDF) English(PDF) Inventive Step In an invention relating to a multilayer substrate in which substrates are laminated through electrodes, the present invention stipulates the layout of conductive particles between the electrodes or insulating adhesion between the substrates, whereas the main cited reference does not specify a specific connection aspect; however, in light of the sub cited reference of an anisotropic conductive film, such a specific connection aspect could have been easily conceived, so that the inventive step thereof was denied.
Appeal 2020-015147 Japanese(PDF) English(PDF) Inventive Step A case in which, regarding the invention of a case related to a game machine, it was judged that Same-day invention is one that indicates two options alternatively, there is no different feature between Same-day invention and the invention of the case when assuming that only the first option between the two options is the matter specifying the invention concerning the options, and therefore the two inventions are identical.
Appeal 2020-015170 Japanese(PDF) English(PDF) Inventive Step Regarding an invention relating to "a hermetically sealed LED light," it is a matter of well-known art to adopt a gold-tin solder as a joining technology of a structure, and further using solder that does not use lead similar to the case of gold-tin solder is environmentally friendly, so that it was determined that there is a motivation, and the inventive step thereof was denied.
Invalidation 2017-800070 Japanese(PDF) English(PDF) Inventive Step, Requirements for Claims, Patent Eligibility With respect to the object of "providing an access port that makes possible to identify that it is automatically injectable after subcutaneous implantation," although the specification describes that physicians, etc. who perceive an identifiable feature visible by an X-ray can identify an access port, it is not obvious that it is possible to immediately identify that the access port is automatically injectable, so that the patent invention was determined not to meet the requirement for support and to lack inventive step.
Invalidation 2019-800076 Japanese(PDF) English(PDF) Novelty, Inventive Step A case in which, regarding an invention related to a protective sheet sticking structure to protect a display and the like, inventive step is affirmed judging that, regarding a different feature that the present invention has one temporary fixing portion that is small, whereas, in Cited Invention, the form of the temporary fixing portion is unclear, the temporary fixing portion of Cited Document also exerts a cleaning function, and thus it does not correspond to one small temporary fixing portion.
Opposition 2020-700822 Japanese(PDF) English(PDF) Inventive Step Regarding the Invention relating to a tablet having a scored line, A-1 classifies tablets with a scored line having an identification code into A to E types according to a positional relationship between the scored line and the identification code, and since there is no motivation to conceive a new type other than the A to E types, it was judged that there is no reason in the opposition to a granted patent.

2. Trademarks

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal 2017-008819 Japanese(PDF) English(PDF) Regarding a defensive mark consisting of characters of "Tuche" in horizontal writing, it is judged that it cannot be said that even if another person uses the original registered trademark for the designated goods of the present application that are not similar to the designated goods relating to it, it may cause confusion about the sources, so that it was judged that it does not fulfill the requirement stipulated in Article 64(1) of the Trademark Act.
Invalidation 2019-890084 Japanese(PDF) English(PDF) The degree of similarity between the Trademark and the Cited Trademark is high, and if the holder of the trademark right uses the Trademark for the designated services, confusion in connection with the source of the services may be caused, and therefore the Trademark was invalidated under the provisions of Article 4(1)(xv) of the Trademark Act.

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Last Updated documents (November 2021)

1. Patents and Utility Models

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Topics Abstracts
Appeal 2015-004779 Japanese(PDF) English(PDF) Inventive Step A case in which the Invention is an "eye drop solution for wearing contact lenses," whereas the Cited Invention is an "ophthalmic composition" whose use is not specified, but the ophthalmic composition of the Cited Invention could be easily used as wearing and eye drop solutions for contact lenses, and exerts no particular observable effect.
Appeal 2018-005143 Japanese(PDF) English(PDF) Inventive Step Case of an invention related to a composition for which dosage and administration for royal jelly is defined, as a use thereof, for prevention of age-related muscle disorder or loss in muscle strength, in which inventive step was denied, reasoning that it is easy to use royal jelly for preventing age-related loss in muscle strength and define dosage and administration for royal jelly based on Cited Documents 1 and 2.
Appeal 2018-014937 Japanese(PDF) English(PDF) Novelty, Inventive Step, Amendment A case in which, regarding the present invention related to a method of installing a geothermal power generation facility, the amendment at the time of request for appeal was rejected on the ground that it falls under an amendment other than for the prescribed purposes, addition of new matters, and violation of the requirements for inventive step (preliminary examination), and the decision of the violation of requirements for novelty in the examiner's decision was supported.
Appeal 2019-001157 Japanese(PDF) English(PDF) Patent Eligibility, Inventive Step A case of judgment that patent eligibility is not satisfied for the reason that the essence of the constituent components is directed to business rules based on an artificial agreement; i.e., a business procedure on financial transactions, and only specifies the business procedure per se as a whole, which is not considered creation of technical ideas utilizing a law of nature.
Appeal 2019-002439 Japanese(PDF) English(PDF) Novelty, Inventive Step A case of decision that the different feature between the Invention and the Cited Invention is not a substantial different feature, for the reason that the Cited Invention in which a "chat function" in an "ecommerce chat server" is implemented obviously includes a step of initiating a chat session even if it is not clearly indicated, even though the Invention is different from the Cited Invention in including the step of initiating a chat session.
Appeal 2019-015570 Japanese(PDF) English(PDF) Novelty, Inventive Step, A case of decision of refusal that the "rotary compressor" of the Invention lacks novelty or inventive step with recognition based on common general technical knowledge, while rejecting the application for the reason that the technical significance of the Invention is unclear and that Support requirement, Enablement requirement, and Ministerial Ordinance requirement are inaccurate.
Appeal 2019-017178 Japanese(PDF) English(PDF) Inventive Step A case where the inventive step is denied because, with respect to the invention for an optical element with high scratch resistance, the effect of the Invention cannot be said to be unpredictable by a person skilled in the art based on the matters described in cited documents and to be prominent beyond the range of effects that could be predicted by a person skilled in the art.
Appeal 2020-001746 Japanese(PDF) English(PDF) Secret Prior Art, Double Patenting, Requirements for Claims/Description A case that denied substantial identity between the Invention and the Prior Invention, regarding the invention relating to mobile communication, for the reason that priority information determined based on whether a mobile terminal (UE) in the Prior invention is in coverage or not is not information that indicates whether the UE in the Invention is in coverage or out of coverage.
Appeal 2020-004036 Japanese(PDF) English(PDF) Novelty, Inventive Step A case in which, regarding an invention related to a fluid transport system for preventing electric discharge, although there is a different feature at first glance in the numerical value limitation, it is decided that Cited Invention is also substantially included in a similar numerical value range when technical interpretation is given, and it was decided that it is not a substantive different feature.
Appeal 2020-006407 Japanese(PDF) English(PDF) Novelty, Inventive Step, Requirements for Claims/Description, Amendment A case of an invention related to surface treatment of a semiconductor light-emitting device in which novelty and inventive step are denied on the ground that, although the Invention has an unclear point, an embodiment included in the Invention exists in Cited Document.
Appeal 2020-008050 Japanese(PDF) English(PDF) Inventive Step, Amendment A case of decision that did not recognize the requirements stipulated in Article 17-2(5)(ii) of the Patent Act (so-called restriction in a limited way) for the reasons that it cannot be said that inventions according to Claim 1 before and after the Amendment are to solve the same problem, dismissed the amendment at the time of appeal, and maintained lack of inventive step in the examiner's decision.
Appeal 2020-008907 Japanese(PDF) English(PDF) Inventive Step A case of decision that denied an inventive step, regarding the invention relating to a semi-hybrid transformer core, for the reason that a person skilled in the art could have easily employed a well-known grain-oriented silicon steel plate in the Cited Invention, since the person skilled in the art is motivated to use a material having excellent magnetic characteristics as an iron core (silicon steel plate) of the Cited Invention.
Invalidation 2015-800030 Japanese(PDF) English(PDF) Inventive Step A case of decision that denied an inventive step, regarding the invention relating to a semi-hybrid transformer core, for the reason that a person skilled in the art could have easily employed a well-known grain-oriented silicon steel plate in the Cited Invention, since the person skilled in the art is motivated to use a material having excellent magnetic characteristics as an iron core (silicon steel plate) of the Cited Invention.
Invalidation 2015-800166 Japanese(PDF) English(PDF) Inventive Step, Requirements for Description Case in which significant effect of an invention related to a therapeutic agent for allergic rhinitis was denied, determining that mometasone furoate was publicly known as a candidate for a new drug for allergic rhinitis and that it was easy to define dosage and administration of mometasone furoate from those for similar drugs, although dosage and administration of mometasone furoate and the object of treatment, inflammatory conditions, were acknowledged as different features.
Invalidation 2015-800226 Japanese(PDF) English(PDF) Secret Prior Art, Requirements for Claims/Description, Amendment A case in which a patent is invalidated due to violations of enablement and support requirements because there is no statement in the description or the like about an example showing integrase inhibitory activity or a mechanism leading to exert integrase inhibitory activity for the invention of a pharmaceutical composition, which is an integrase inhibitor, and for the compounds recited in claims.
Invalidation 2017-800084 Japanese(PDF) English(PDF) Novelty, Inventive Step, Requirements for Claims/Description, Priority A case of decision of refusal that the "rotary compressor" of the Invention lacks novelty or inventive step with recognition based on common general technical knowledge, while rejecting the application for the reason that the technical significance of the Invention is unclear and that Support requirement, Enablement requirement, and Ministerial Ordinance requirement are inaccurate.
Invalidation 2019-950001 Japanese(PDF) English(PDF) Retrial Concerning a request for retrial against the final and binding decision, with respect to the allegation that there are reasons for retrial prescribed in the provisions of Article 338(1)(vi), (vii), and (ix) of the Code of Civil Procedure, the request for retrial was dismissed by the trial decision, since these reasons for retrial lack the requirement and are illegal, or even if those are not illegal, there is no reason.
Opposition 2019-700836 Japanese(PDF) English(PDF) Inventive Step, Requirements for Claims/Description A case of decision to maintain the patent according to the corrected claims after approving the correction, regarding the invention relating to two-dimensional barcodes and a method of authenticating the same, for which an opposition to the grant of a patent was raised from a company in Switzerland.
Opposition 2019-700965 Japanese(PDF) English(PDF) Requirements for Claims/Description Since "a tunable laser light source" used in the invention of "a device for swept source optical coherence domain reflectometry" was not normally available to a person skilled in the art at the time of the priority date, it was judged that the invention did not satisfy the enablement requirement.
Opposition 2020-700440 Japanese(PDF) English(PDF) Novelty, Inventive Step A case in which novelty and inventive step are affirmed regarding the patent for an invention of a pet food composition in which a salt of sorbic acid is found effective in improving palatability and the content thereof is optimized, whereas the pet food of the cited invention contains a salt of sorbic acid for microbiological stability with no incentive to change its content.
Trials for correction 2018-390131 Japanese(PDF) English(PDF) Correction A case of trial for correction regarding an invention related to a manufacturing method of coins in which the correction is approved on the ground that the correction is for the purpose of clarification of ambiguous statement and all the correction matters satisfy the purpose of correction and the requirements of correction.

2. Designs

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal 2020-014335 Japanese(PDF) English(PDF) The principal design is an automobile for a race, and since consumers are specialists involved in auto racing and carefully observe an appearance in detail, the different features of the design in the application and the Cited Design give a different impression and cause a different aesthetic impression, and thus it was registered, as it was judged that the two designs are not similar to each other.
Appeal 2020-014403 Japanese(PDF) English(PDF) The design in the application is for a therapeutic instrument for uterine cervix carcinoma, in which a contour shape in a front view of a platy body was recognized as "each side has the same convex arc shape, and the bulge width of these convex arc-shaped sides is about a half of the bulge width of an arc of a sector centered on one vertex and with a distance to adjacent vertices as the radius," and it was judged that it could not have been easily created.

3. Trademarks

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal 2017-010633 Japanese(PDF) English(PDF) The three-dimensional shapes that constitute the trademark in the application and the position to which it is affixed are of a type that consumers recognize that it is generally widely used for the purpose of contributing to the function or an aesthetic impression of a product for the packaging container of the product, and it was judged that it does not have distinctiveness by itself, and does not have distinctiveness even collectively considering used evidences.
Opposition 2018-685017 Japanese(PDF) English(PDF) A case where it is determined that the Trademark and the Cited Trademarks are similar trademarks because the deer figure portion is a main portion and the deer figure portions cannot be compared with each other in terms of pronunciation, give similar impressions in terms of appearance, and have common meaning of "male deer".

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Last Updated documents (October 2021)

1. Patents and Utility Models

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Topics Abstracts
Appeal 2019-007539 Japanese(PDF) English(PDF) Requirements for Claims/Description, Amendment A case where it is determined that, regarding the inventions for a photocatalyst coating liquid and a photocatalyst film using the same, an amendment for introducing specific physical property values from only the trade name of the silica particles described in the Description corresponds to the addition of new matter.
Appeal 2019-012580 Japanese(PDF) English(PDF) Inventive Step A case which denied inventive step, regarding the invention relating to an encoding method, a decoding method, an encoding apparatus, and a decoding apparatus, for the reason that the matters specified by the amendment at the time of appeal could have been easily conceived by a person skilled in the art from a document referred in a document cited in the examiner's decision.
Appeal 2019-013265 Japanese(PDF) English(PDF) Inventive Step A case that denied inventive step, regarding an invention relating to hybrid memory management, for the reason that the different feature is a conventional technique for a person skilled in the art and it is only a design matter which could have been selected by a person skilled in the art when appropriate, by using the documents used in the reasons for refusal of EPO as supplementary materials indicating well-known technique, as references.
Appeal 2019-015596 Japanese(PDF) English(PDF) Inventive Step, Amendment A case where inventive step is denied, because an invention relating to a resin composition comprising polycarbonate as a main component and having excellent mechanical strength was amended at the time of request for a trial to differentiate the invention from the cited invention, but the difference could have been easily invented by a person skilled in the art from the description of the citation.
Appeal 2019-016689 Japanese(PDF) English(PDF) Novelty, Divisional Application A case in which, regarding an invention related to an anisotropic conductive film and a method for producing the same, although the present application is a grandchild application in a divisional application family involving parent, child, and grandchild applications, novelty is denied based on the publication of unexamined application of the parent application on the ground that a decision of refusal that states that the child application does not meet the requirements for division has become final and conclusive, resulting in retroaction of the application date of the present application only to the application date of the child application.
Appeal 2020-001184 Japanese(PDF) English(PDF) Inventive Step, Requirements for Claims Concerning an invention related to a solar battery, although the specification describes a plurality of embodiments corresponding to the Invention, it was judged that the Invention is not clear, since is cannot be judged whether or not the embodiments include the matters specifying the invention of claims.
Appeal 2020-001351 Japanese(PDF) English(PDF) Requirements for Claims/Description, Amendment A case in which a request for amendment was dismissed and the examiner's decision was maintained by reasoning with respect to polymorphs of the compound of the present invention after the amendment that the present invention after the amendment does not comply with the requirement that the invention must be independently patentable, because it does not comply with the enablement requirement and the support requirement in the light of description in the detailed description of the invention and common technical knowledge as of the time of filing the application.
Appeal 2020-002196 Japanese(PDF) English(PDF) Divisional Application A case in which, regarding inventions related to a golf ball and a method for producing the same, it was judged that the Appellant should not be granted a patent in accordance with the provisions of Article 39(2) of the Patent Act on the ground that the inventions according to present divisional application and inventions according to the original application are identical inventions, and the inventions according to the original application have been already granted a patent and thus consultation cannot be performed.
Appeal 2020-002298 Japanese(PDF) English(PDF) Inventive Step A case of judgment, regarding the invention relating to a data storage system using a distributed virtual array, that a person skilled in the art could have easily conceived of performing first write processing "without involving any of the persistent storage devices of the storage nodes" as long as the first write processing is configured to "write data directly to the NVRAM", in the Cited Invention.
Appeal 2020-004050 Japanese(PDF) English(PDF) Novelty A case of decision that denied novelty, regarding the invention on mobile communication, for the reason that the Cited Document is considered to present technical matters relating to the different feature, considering common general technical knowledge, even though they are not clearly indicated with words in the Cited Document which is a standard submission document.
Appeal 2020-005906 Japanese(PDF) English(PDF) Novelty A case that found novelty and inventive step of an invention relating to a projection device and a three-dimensional measuring device, for the reason that the configuration of "changing a period of pattern light to be projected on the object to be measured" in the Invention, which indicates changing a pitch of stripe pattern, is not descried or indicated in the Cited Document, and the Cited Invention does not have such function.
Opposition 2019-700748 Japanese(PDF) English(PDF) Inventive Step, Requirements for Claims/Description, Amendment A case in which, regarding an invention related to a holding material for an exhaust gas treatment device and the like, it is judged that the requirements for support are not satisfied, on the ground that there is no description, in the description, etc., about a mechanism that can solve the problem to be solved by limiting a numerical value range, and, even if examples or allegations of the patentee in the written opinion are taken into consideration, a numerical value range which cannot solve the problem to be solved may be included.
Opposition 2020-700041 Japanese(PDF) English(PDF) Novelty, Inventive Step Regarding an invention related to a method of constructing an outer wall of a house in a conventional construction method, after the cited invention is recognized from a video posed in a webpage, it was judged that it cannot be said that the patent invention is identical to the cited invention or could have been easily conceived therefrom.
Trials for correction 2020-390073 Japanese(PDF) English(PDF)   Concerning the invention related to an indwelling needle assembly, in judgment on the requirements for correction (independent requirements for patentability), the requirements for correction are examined, including reasons for invalidation of the defense of invalidation separately disputed in an infringement proceeding, and then, the correction was approved, since it is judged that it satisfies independent requirements for patentability.
Hantei 2020-600003 Japanese(PDF) English(PDF)   Concerning the invention relating to a slider fastener, Article A has the opposite side that can be seen through, and makes light pass through, so that it falls under "having translucency". Therefore, it was judged that Article A falls within the technical scope of the Patent Invention, since it satisfies the constituent components.

2. Designs

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal 2020-005339 Japanese(PDF) English(PDF) Concerning the design related to an article "cup," the form of outer peripheral surfaces and inner peripheral surfaces of the design in the application and the Cited Design is recognized in detail, and then it is judged that the design in the application is not similar to the Cited Design, since the effects of the different features in the form on the determination of similarity are large.

3. Trademarks

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal 2019-005954 Japanese(PDF) English(PDF) A case where, although the overall configurations of the trademark in the Application and the Cited Trademark are different from each other, the trajectories of the configurations are the same, and accordingly, the two trademarks may be confused with each other, and in addition, the trademark in the Application is used for goods the same as or similar to the designated goods of the Cited Trademark, and accordingly, it is determined that the trademark in the Application falls under Article 4(1)(xi) of the Trademark Act.
Appeal 2019-010751 Japanese(PDF) English(PDF) A case where, regarding a trademark consisting of only a figure, because the trademark in the Application is only recognized as a type of a head figure of a person, in a state of thin hair or hair loss, who is the target of the product in relation to the designated goods and is a trademark which does not enable consumers to recognize the goods as being connected with a certain person's business, it is determined that the trademark in the Application falls under Article 3(1)(vi) of the Trademark Act and therefore is rejected.
Trials for rescission 2018-300156 Japanese(PDF) English(PDF) On the website of the holder of trademark right, although the use of the used mark in restaurant bars in the United States can be inferred, it cannot be said that it is proved that the Trademark is used in Japan, so that it was judged that the trademark registration should be cancelled in accordance with Article 50(1) of the Trademark Act.

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Updated documents (September 2021)

1. Patents and Utility Models

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Topics Abstracts
Appeal 2018-016652 Japanese(PDF) English(PDF) Novelty, Inventive Step A case of decision that denied novelty and inventive step, regarding the invention of automatic gesture recognition for a sensor system, for a technical ground for specifying that "the maximum frequency of sensor signals to be removed should be 15 Hz to 20 Hz", on the basis of well-known arts, by comprehending technical significance on the technical ground from the description in the specification.
Appeal 2019-004557 Japanese(PDF) English(PDF) Inventive Step A case in which, regarding an invention related to a draft chamber, Cited Document 2 that has a technical field and a problem to be solved common to Cited Document 1 was discovered by patent document search at the appeal stage, and inventive step was denied on the ground that it could have been conceived of by a person skilled in the art with ease to adopt the technical matter of Cited Document 2 to Cited Invention of Cited Document 1.
Appeal 2020-002822 Japanese(PDF) English(PDF) Inventive Step A case in which, regarding a different feature related to a direction-changing rotation driver in an invention related to a three-dimensional surface potential distribution measurement system for measuring a surface potential distribution of a measurement target, the inventive step of the invention of the case is acknowledged on the ground that there is no motivation to apply the technology described in Cited Document 2 or Cited Document 3 to the invention described in Cited Document 1.
Appeal 2020-004838 Japanese(PDF) English(PDF) Inventive Step A case of decision that denied an inventive step, regarding an invention relating to methods and apparatuses for controlling timing of feedback transmissions, for the reason that a person skilled in the art could have easily conceived of combining a sub-reference, in consideration of underlying common general technical knowledge, with documents disclosed in a standard-related workshop as a main reference.
Appeal 2020-004894 Japanese(PDF) English(PDF) Inventive Step A case of decision that denied an inventive step, regarding the invention relating to a "money management system", for the reason that it is a technically common practice that set values for change required in a bill change dispenser and information on the current amount of money in the bill change dispenser are required for obtaining shortfall in change.
Invalidation 2018-800122 Japanese(PDF) English(PDF) Novelty, Inventive Step, Requirements for Claims/Description A case where the inventive step of the Invention is approved on the ground that regarding the judgment of the priority date, the reference date for judging novelty and inventive step was set as the priority date because it is judged that only "soybean hypocotyl" was explicitly stated as "a fermenting material" in the priority document, but it is stated in the priority document that equol is produced using a "daidzein compound" as a fermenting material.
Invalidation 2019-800016 Japanese(PDF) English(PDF) Novelty, Inventive Step Concerning the invention relating to an object to be processed cutting method, although in the trial decision, Invention A-4 was approved only for a sapphire substrate, in the judgment of the Intellectual Property High Court (2020 (Gyo-Ke) 10018), Invention A-4 was considered to be related to a substrate not limited to sapphire.  However, the conclusion of the trial decision that approves inventive step was maintained, and the request was dismissed.
Invalidation 2019-700170 Japanese(PDF) English(PDF) Requirements for Claims A case where it is determined that the invention for an optical adhesive layer and an adhesive layer-attached optical film does not meet the requirements of clarity, because it is not specified at what point in time the content of iodine, etc. is within the range specified, and an unexpected disadvantage will be caused to a person who has recognized that the adhesive layer-attached polarizing film produced by himself/herself does not fall under the invention, and to a person to whom the adhesive layer-attached polarizing film is transferred after some time has passed from the production.

2. Designs

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal2020-003523Japanese(PDF) English(PDF)In a case of a screen design relating to an electronic computer with a camera function, it was judged that the amendment after the appeal does not change the gist, and since the articles of the Cited Designs do not have the usages and functions relating to the article in the application, it cannot be said that it could have been easily created, and thus it was judged that it meets the requirements of creative difficulty.

3. Trademarks

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal 2019-006526 Japanese(PDF) English(PDF) A case where it was determined that a trademark consisting of the standard characters "ステーキしょうゆ(suteki shoyu; steak soy sauce)" does not meet the requirements of Article 3(2) because the trademark falls under Article 3(1)(iii) and it is difficult to acknowledge that the used trademark is identical with the trademark in the Application even in consideration of evidence (use records or the like).

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Updated documents (August 2021)

1. Patents and Utility Models

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Topics Abstracts
Appeal 2018-009319 Japanese (PDF) English (PDF) Inventive Step A case in which inventive step is denied on the ground that, even though the main difference is the specifically combined compounds, such as sex steroid precursors, when compared to the Cited Invention, a person skilled in the art could easily conceive of specific combinations of compounds from the descriptions in citation examples including the mechanism of action and common general technical knowledge.
Appeal 2019-006706 Japanese (PDF) English (PDF) Inventive Step, Requirements for Claims/Description A case of an invention related to lithography, etc., in which it was judged as violation of the support requirement and the enablement requirement since the principle for solving the problem to be solved by the invention with the means for solving the problem cannot be understood in the light of descriptions in the specification, etc. and common technical knowledge and there is no concrete example such as working examples.
Appeal 2019-007937 Japanese (PDF) English (PDF) Novelty, Patent Eligibility A case in which, regarding an invention related to a grip aid operation method, it is judged that it does not fall under "industrially applicable inventions" of the Patent Act on the ground that an operation to press a mound part to accelerate a ball batting operation is not recognized as having objectivity that can be transferred to a third party as knowledge.
Appeal 2019-010332 Japanese (PDF) English (PDF) Patent Eligibility A case of a decision that the invention regarding a data structure is not considered an artificial agreement and falls under the "invention" utilizing the laws of nature for the reason that the invention is configured to include "weight information", is equivalent to a program to be executed by the learning device, and does not only specify the contents of a data element to be provided to the learning device.
Appeal 2019-011786 Japanese (PDF) English (PDF) Inventive Step Regarding the invention related to a cosmetic applicator having fibers, the interpretation of "ribs" became a problem; since a general technical level relating to ribs that are not provided with a free end was indicated and it is not specified that the ribs have a free end in the description of claims of the present application, inventive step was denied.
Appeal 2019-012497 Japanese (PDF) English (PDF) Novelty, Amendment A case of decision that dismissed an amendment and denied novelty, regarding an invention relating to a charge system, or the like, using NFC, for the reason that there is no description or indication in the Originally attached specification about protective means, which is added by the amendment at the appeal, configured to protect an IC card from destruction when a second NFC antenna induces electromagnetic induction in a first NFC antenna, and it is determined as an addition of new matter.
Appeal 2019-013882 Japanese (PDF) English (PDF) Inventive Step Regarding the invention relating to a module product that is a part of a three-dimensional shaping apparatus by laminating, in response to the Appellant's allegation that there is no motivation to change position detection means of Cited Document 1 to leveling means, the allegation was denied from the description of Cited Document 1; furthermore, it is judged that it can be easily conceived to perform modularization from the description of Cited Document 1, and thus inventive step was denied.
Invalidation 2020-700820 Japanese (PDF) English (PDF) Requirements for Claims/Description A case in which, regarding an invention related to a method of manufacturing a high strength steel sheet, it is judged that the patent cannot be revoked on the ground that: regarding the requirements for support, referring to the descriptions of the description, a person skilled in the art can understand that solution of the problem to be solved of the invention is not prevented; and, regarding the enablement requirement, from the common general technical knowledge and the descriptions of the description, it is not recognized that excessive trial and errors and the like are needed.

2. Designs

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal 2020-001100 Japanese (PDF) English (PDF) The design in the application relates to a part of the article "Projector," and since the usage and function of the design in the application and the Cited Design do not have a decisive influence on the determination of similarity between the two designs and the effects of the different features in the form on the determination of similarity between the two parts are large, it was judged that the design in the application is not similar to the Cited Design.

3. Trademarks

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Hantei 2019-600030 Japanese (PDF) English (PDF) A case where, because Mark A displays Chinese characters of "日向夏(Hyuganatsu; Citrus tamurana)" in a common way, "日向夏 (Hyuganatsu; Citrus tamurana)" is a common name of a citrus fruit and is used as ingredients of the products "confectionery and bread and buns", it is determined that Mark A falls under Article 26(1)(ii) of the Trademark Act and does not belong to the range of the effect of the trademark right of the Trademark.

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Updated documents (June 2021)

1. Patents and Utility Models

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Topics Abstracts
Appeal 2019-000691 Japanese (PDF) English (PDF) Novelty, Inventive Step, Requirements for Claims/Description The case of an invention related to a barrier coating in which a wide numerical range was judged not to comply with the support requirement even if description in the specification and well-known art are taken into consideration, and claims specified with functions and characteristics were judged not to comply with the enablement requirement because claims cannot be deemed to be workable in any case other than working examples.
Appeal 2019-005292 Japanese (PDF) English (PDF) Inventive Step, Requirements for Claims Regarding an invention relating to a wearable device, since the invention according to Claim 1 could have been easily made from the Cited Documents, and the invention according to Claim 3 is unclear, it was determined that the invention does not satisfy the requirements for inventive step and clarity.
Appeal 2019-009561 Japanese (PDF) English (PDF) Inventive Step A case that denied an inventive step by considering the operation implemented by specific allocation in the Cited Invention, regarding an invention relating to a channel measurement method, or the like, for allocating reference signals in a radio communication system having eight or more antenna ports.
Appeal 2019-010589 Japanese (PDF) English (PDF) Inventive Step, Amendment A case of an invention related to a snowfall system of crystal snow, in which, for the reason that the technological content as an invention is unclear, the amendment was dismissed by, while judging that it is not one for the purpose of restriction of the scope of claims or the like, and, further, that it constitutes addition of new matters, judging that, even if it is one for the purpose of restriction of the scope of claims, it still violates requirements for independent patentability because the requirement of inventive step is not satisfied.
Appeal 2019-013111 Japanese (PDF) English (PDF) Inventive Step, Amendment Concerning an invention relating to a lighting device, it was judged that an amendment as of the request for appeal is not within the scope of the matter described in the Original description etc., and even if it is not one that adds new matters, the invention after the Amendment does not meet the requirements for inventive step, so that it was judged that it did not meet independent requirements for patentability, and thus the request was rejected after the Amendment was dismissed.
Appeal 2020-004398 Japanese (PDF) English (PDF) Secret Prior Art A case in which, regarding an invention related to a slot machine, it is judged that the Invention is identical with the Prior Invention on the ground that it is a well-known art to make an area of a display means be within the range of a numerical value limitation of the Invention, and, in addition, how to stipulate the lower limit value is nothing but a design matter that can be determined arbitrarily by a person skilled in the art, and, therefore, the Different Feature is not a substantive different feature.
Invalidation 2019-800012 Japanese (PDF) English (PDF) Claimant Eligibility Case related to an invention of an antiviral sanitary mask in which standing as the demandant for a trial for invalidation of a patent was denied and the demand for the trial for invalidation was dismissed based on a judgment as a result of examination including examination of witnesses that assignment of the right to receive a patent has not sufficiently been proved and that the Demandant cannot be deemed to be a person who owns the right to receive a patent for the invention of the case.
Trials for correction 2020-390032 Japanese (PDF) English (PDF) Correction A case that approved a correction, regarding the invention of a mount apparatus and accessory, for the reason that the purpose of the correction is judged as correction of errors because incorrectness of the description before the correction and correctness of the description after the correction are obvious from the description of the specification, etc. and common general technical knowledge, or the like, and a person skilled in the art may naturally notice the fact and express understanding to the object after the correction.

2. Designs

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal 2020-000361 Japanese (PDF) English (PDF) The design in the application relates to an image design displayed in a front display portion of an article "Digital Pathology Apparatus". The image was certified in consideration of an article property and the overall shape of an article (expressed by broken lines), and it was judged that it satisfied the requirements of creative difficulty, since it cannot be said that the form of the image part in the application could have been easily created.

3. Trademarks

Types JPO Docket Numbers Decisions
(JP)
Decisions
(EN)
Abstracts
Appeal 2017-002496 Japanese (PDF) English (PDF) A case where, because the trademark in the Application is a color trademark using "orange" for the designated goods "oil hydraulic shovel", is only recognized by consumers or the like as a trademark representing a usually used color, and is not recognized by consumers or the like as a trademark displaying the source of the goods or the like, it is determined that the trademark in the Application falls under Article 3(1)(iii) of the Trademark Act and does not meet the requirement in Article 3(2) even if the evidences are comprehensively examined.

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[Last updated 12 January 2022]

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Inquiry : Trial and Appeal Division, Japan Patent Office

E-mail: PA6B00@jpo.go.jp