TOPICS

“Appraisal Certification System”

Overview:

The Intellectual Property (IP) High Court upheld the decision by the Board of Examiners of the Japan Patent Office (JPO) rejecting the plea from the plaintiff in the invalidation trial.

Main Issue:

Whether the detailed description of the invention in the specification of the subject patent meets the enablement requirement.

Summary:

The IP High Court reasoned that in finding whether the enablement requirement set forth in the Patent Act, Article 36(4)(i) is met or not, it should consider whether the detailed description in the specification describes the invention defined in the claims in a manner sufficiently clear and complete so that a person having ordinary skill in the art can implement the invention without excessive trial and error based on the disclosure in the specification and the general technical knowledge upon filing.

The detailed description of the invention in the specification states: “A user can use the application [B] and use the secret key α₁ assigned to the appraisal required product … 1, and the secret key β₁ assigned to the guarantee card to read the product information and the transaction information of the appraisal required product 1 written to the block chain data of the dedicated platform”. Further, in light of the effect achieved by respective inventions of the present matter, whereby “only a true user who owns the appraisal required product 1 and the guarantee card can easily perform highly reliable appraisal and authentication”, the detailed description of the invention in the specification can be interpreted as also stating: “after certifying that the user 4 is a true user who owns the appraisal required product 1 and the guarantee card, only the certified user can read the product information and the transaction information of the appraisal required product 1 written to the blockchain data of the dedicated platform”.

Furthermore, digital signature technology with public key cryptography, where encryption is performed with a secret key and decryption with a corresponding public key to authenticate the user, has been general technical knowledge at the time of filing the subject patent application in the technical field of encryption to which each of the claimed inventions pertains.

In light of the above, a person of ordinary skill in the art referring to the detailed description of the invention in the present specification would have understood that it is natural that the secret key α₁ assigned to the appraisal required product 1 and the secret key β₁ assigned to the guarantee card are used together with their corresponding public keys to identify that the user is the true user who owns the appraisal required product 1 and the guarantee card.

Accordingly, the skilled person would also have construed the detailed description in the present application as disclosing that the digital signature technology, where encryption is performed with a secret key α₁ assigned to the appraisal required product 1 and the secret key β₁ assigned to the guarantee card, and decryption is performed with public keys respectively corresponding to the secret keys α₁, β₁ to authenticate the user, is used as a means to identify the user for authorization of use of the application [B], the user is authenticated as the true user owning the appraisal required product 1 and the guarantee card, and only the authenticated user can read the product information and the transaction information of the appraisal required product 1 written to the blockchain data of the dedicated platform.

Consequently, the detailed description of the invention in the specification is considered to meet the enablement requirement.

Comments:

The plaintiff argued that the subject patent violates the enablement requirement since the detailed description of the invention in the specification is unclear due to lack of any description on the functions to implement the features E and F, and that a skilled person would not have understood such functions even with reference to the general technical knowledge at the time of filing the application. However, the Court rejected the plaintiff’s argument by reasoning that the detailed description of the specification discloses the respective inventions in a manner sufficiently clear and complete so that the invention defined in the claims can be carried out by a person having ordinary skill in the art based on general technical knowledge without excessive trial and error.

Hiroshi Abe