【Research Center for the Legal System of Intellectual Property】

Activities

Inventive Step of an Invention and Protection and Use of the Patented Invention

RC　Motoki Kato

Most of nations and regions including Japan adopt a legal system with a policy of granting no patent right to an invention that could be easily made by a person skilled in the art based on the inventions in the public domain, that is, an invention without an inventive step. And it is generally understood that the purport of this provision is on the grounds of an idea that granting patents to an invention without an inventive step will even hamper development of an industry.

Therefore, it is necessary to examine what level of an inventive step should be set in order to achieve development of an industry most effectively. For example, in the revised Examination Guidelines for Patent and Utility Model of 2000, Japan Patent Office stated that "it may be appropriate to consider a person in skilled art as "a team of a group o f persons" from multiple technical fields rather than an individual". This statement can be viewed as the JPO's judgment on the level of an inventive step. Based on the fact that a specialist of one technical field can easily obtain technical information in other fields as information technology has been developed, the JPO judged what level was needed for further contribution to development of an industry and determined a higher level was appropriate.

Moreover, the question of how high the level of an inventive step should be, and the question of what system of protection and use of the patented invention should be are the two sides of the same coin. Those two questions must be discussed together. It is difficult to immediately determine which system is better to contrite to development of an industry, the system to strongly protect only outstanding inventions or the system to modestly protect all inventions including decent ones. However, from the view of development of an industry, it is apparently inappropriate to adopt the system to modestly protect outstanding inventions or the system to strongly protect all inventions including decent ones.

From this perspective, I would like to briefly make a comparison of the level of an inventive step and protection and use of the patented invention between Japan and the United States. As for the level of an inventive step, I have heard several times that Japanese level was higher, but never heard that American level was higher. As for protection and use of the patented invention, Japanese legal system allow an injunction against patent infringement without exception and also, in the report titled "Various Problems Related to a Smooth Use of the Patented Invention", the Industrial Structural Council of Japanese government announced their conclusion to maintain the current arbitrary license system and its operation, which hardly contribute to promotion of patent utilization. Compared with this, the United States has not traditionally allowed an injunction against patent infringement in case that injunction may cause any harm to public interests, people's safety, or the environment. The Supreme Court's decision on the case of eBay clarified the injunction against patent infringement should be allowed only when the predetermined four-factor test was satisfied.

Thus, it could be roughly true that Japan relatively adopts the system and operation to strongly protect outstanding inventions while the U.S. relatively adopts the system and operation to modestly protect all inventions including decent ones. Both countries are self-absorbed enough to contribute to development of their industry.

However, the Intellectual Property Strategic Program 2006 of Japan announced that METI would make an effort to establish a substantive mutual recognition of patents that a patent granted in one country should be recognized in other countries in principle. This effort must be facilitated but can break the self-absorbed system stated above. Therefore, it is necessary to conduct a full study about the system and operation of protection and use of the patented invention including antitrust legislation.