TOPICS

“Laundry Detergent Composition”

Overview:

In a suit against a trial decision where a decision to dismiss a request for a trial for invalidation of a patent was made, with none of the invalidation reasons being recognized, including the lack of inventive step based on the cited invention and the violation of the support requirement, the court canceled the decision on the grounds of an error in the judgment of inventive step, while finding no error in the decision regarding the support requirement.

► Link to a summary and full text of the trial decision (Japanese)

Main Issue:

The presence or absence of an error in the decision regarding the determination of the violation of the support requirement

Court’s Ruling:

“The results of the evaluation of the deodorizing effect of the composition in the examples, which satisfy the composition stipulated in Present Invention 1, do not indicate that the effect of Present Invention 1 could not have been anticipated by a person skilled in the art as an effect produced by the configuration of each of the present inventions, nor do they indicate that the effect is remarkable beyond the scope of effects that a person skilled in the art could have anticipated from the configuration. In other words, it cannot be recognized that the effect of Present Invention 1 is remarkable beyond the scope that a person skilled in the art could have anticipated when applying the matters identifying the inventions according to Differences 1 to 3 to the invention of Plaintiff’s Exhibit 1.”

“The problem of each of the present inventions is to provide a laundry detergent composition that exhibits excellent deodorizing effects even in environments where bacteria can easily proliferate when clothing is in a damp state.”

“Even if the deodorizing effect of that corresponding to the example of Present Invention 1 was at the level of ‘3 points: unpleasant odor is somewhat strongly felt,’ it can be recognized from the results of the deodorizing effect evaluation of this case that a certain deodorizing effect was obtained. Examples 10 and 11, which contain component (E), achieved even better deodorizing effects compared to other examples… However, it can be said that a certain deodorizing effect was also obtained for the examples of Present Invention 1 that do not contain component (E). Therefore, although the effects of each of the present inventions cannot be said to be remarkable and could not be anticipated…in terms of whether there is a violation of the support requirement, Present Invention 1, in light of the detailed description of the invention in the present specification, can be said to be within the scope that a person skilled in the art can sufficiently recognize as being able to solve the aforementioned problem…., and it can be said to be described in the detailed description of the invention.”

Comments:

This judgment canceled the decision of the trial for patent invalidation, which had dismissed the request, on the grounds that there was an error in the assessment of inventiveness. One of the reasons for this was that the effects achieved by each of the present inventions were not recognized as being remarkable beyond the scope that a person skilled in the art could have anticipated from the configuration of the inventions. On the other hand, regarding the presence or absence of a violation of the support requirement for each of the present inventions, the judgment stated that although the effects of each of the present inventions could not be said to be remarkable and could not be anticipated, each of the present inventions falls within the scope that can solve the problems identified in light of the description in the present specification, and thus it was determined that the support requirement was met.

Regarding the criteria for determining whether the description in the claims meets the support requirement, the Grand Panel decision of the Intellectual Property High Court on November 11, 2005, established the standard that “by comparing the description in the claims with the detailed description of the invention, it should be examined and determined whether the invention described in the claims is the invention described in the detailed description of the invention, and whether it falls within the scope that a person skilled in the art can recognize as being able to solve the problem of the invention based on the detailed description of the invention, or whether it falls within the scope that a person skilled in the art can recognize as being able to solve the problem of the invention in light of the common general knowledge at the time of filing, even without such description or suggestion.” This judgment also follows this standard. However, the issue sometimes arises as to how to identify the problem of the invention within this standard. Occasionally, there is an argument that the problem to be solved must be one that can be resolved in light of the prior art at the time of filing. However, many court decisions hold that the framework for determining the support requirement should not incorporate the assessment of inventiveness, and comparisons with the state of the art, etc., at the time of filing should be conducted solely as an issue of inventiveness (see, for example, the Grand Panel decision of the IP High Court on April 13, 2018, and the IP High Court decision on May 24, 2018). This judgment, like these court decisions, is considered useful for understanding the concept of the support requirement.

Yasuhiro SUTOH