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2021.11.15 Patent

Obstructive Factor in Determination on Inventive Step in Patent Prosecution

1. Introduction

In the Examination Guidelines for Patent and Utility Model in Japan (see Provisional English translation), “obstructive factor” (subsection 3.2.2) is listed as one of the “factors in support of the existence of an inventive step” (subsection 3.2), in relation to determination on an inventive step (see Section 2 “Inventive Step” in Part III, Chapter 2).

The obstructive factor is “a factor which obstructs application of the secondary cited invention to the primary cited invention” and “a factor which obstructs the reasoning that a person skilled in the art could have easily arrived at the claimed invention”.

Our analysis and experience have found that there are some cases in which an “obstructive factor” is overlooked, or denied despite the assertion of the existence of the “obstructive factor”, in the examination and appeal examination before the JPO, but in which the existence of the “obstructive factor” is admitted before the court at a later stage.
Such cases could be said to be evidence that so-called hindsight bias is strongly exhibited in the examination and appeal examination. The stronger the Examiner and Appeal Examiner’s hindsight bias is, the more the patentability (inventive step) of the claimed invention is underestimated, and this may cause oversight of an “obstructive factor”.
We are continuously monitoring and studying such cases so as to be able to develop reasonable assertions and counterarguments to a determination by the Examiner and Appeal Examiner.
Focusing on an “obstructive factor”, we herein outline the provisions regarding the obstructive factor in the examination guidelines, and introduce a precedent in which the IP High Court admitted the existence of an “obstructive factor” and overturned the JPO’s determination.

 

2. Obstructive Factor

2-1. Provisions in the examination guidelines

In the examination guidelines, the subsection “3.2.2 Obstructive factor” (see Section 2 “Inventive Step” in Part III, Chapter 2) defines that “presence of the circumstances to obstruct application of the secondary cited invention to the primary cited invention is a factor to work in the direction to support the existence of an inventive step as a factor to obstruct the reasoning (obstructive factor)”.

 

2-2. Examples of obstructive factor listed in the examination guidelines

The examination guidelines list the following four forms in which the secondary cited invention would be an obstructive factor.
(i) The secondary cited invention that would render the primary cited invention contrary to the purpose thereof if applied to the primary cited invention.
(ii) The secondary cited invention that would render the primary cited invention unfunctional if applied to the primary cited invention.
(iii) The secondary cited invention considered improbable to be adopted because application thereof is excluded by the primary cited invention.
(iv) The secondary cited invention that a person skilled in the art would normally not consider applying because, in a publication, etc., disclosing the secondary cited invention, which includes the secondary cited invention and other embodiment(s), the secondary cited invention is described as an example inferior in terms of effect to the other embodiment(s) as for the issue to be solved by the primary cited invention.

 

3. Case in which IP High Court Ruled Applicability of Obstructive Factor

3-1. Case of demanding revocation of the trial decision
(2016 (Gyo-Ke) 10071)

[The subject invention]

In order to solve the issue that “providing the same protection to every application improves the safety level but causes a problem of decreased convenience”, the subject invention employs a configuration to “prevent transmission” “when the application is an application identified by a confidential identifier stored in the confidential data identifier storage and when the destination is somewhere other than the local drive”.
Employment of such a configuration produces effects that “leakage of the file, etc., including confidential matters by transmission thereof can be prevented” and that “an application other than the application identified by the confidential identifier can be transmitted freely to thereby secure convenience of users”, and thus can solve the above-described issue.

In view of this, the technical idea underlying the subject invention lies in that it decides on the appropriateness of transmission based on whether the application handles confidential matters.

[Primary cited invention]

The primary cited invention relates to a file management program and a file management device.
In the primary cited invention, an application is not distinguished based on whether it handles confidential matters, and thus, the primary cited invention has no perspective of protection of confidential matters. Furthermore, the primary cited invention is configured to determine whether a file needs to be protected by comparing the safety levels set individually for the application that is the input source and for the storage area that is the output destination. Thus, even the same file may be protected or may be unprotected depending on the safety levels of the input source and the output destination.

In light of the above, the technical idea of the primary cited invention lies in that whether the file needs to be protected is determined relatively and flexibly by comparing the safety levels set individually for the input source application and for the output destination storage area. Here, it is to be understood that the “identifier for the input source application” itself does not have any effect or function to identify the “application handling confidential matters” directly or primarily; rather, it works or functions as an identifier for the input source application as a premise for acquiring information on the safety level of the “input source application” (e.g., a numerical value indicating the safety level), which is necessary for comparison in determining the file protection method as described above.

[Difference between the subject invention and the primary cited invention]

The confidential data identifier storage of the subject invention stores the confidential identifier that identifies a confidential application; whereas the protection method database of the primary cited invention also stores an identifier for an application not handling confidential matters, which is a difference therebetween.

[Obstructive factor]

With respect to this difference, in order to arrive at the configuration of the subject invention from the primary cited invention, the configuration of the protection method database of the primary cited invention needs to be modified such that room for comparison of the safety levels of the input source and the output destination is eliminated by, for example, absolutely prohibiting external transmission of a file handled by an application managed by such database.
However, as described above, the technical idea of the primary cited invention lies in that whether a file needs to be protected is determined relatively and flexibly by comparing the safety levels set individually for the input source and for the output destination. Thus, it is obvious that modifying the configuration of the primary cited invention as described above goes against the technical idea of the primary cited invention.

Accordingly, there are circumstances that obstruct arriving at the configuration of the subject invention from the primary cited invention.

[Ruling by the IP High Court]

As described above, it cannot be said that the configuration of the subject invention could have been easily arrived at from the primary cited invention.

 

3-2. Our comments

In the above-described case of demanding revocation of the trial decision, the secondary cited invention is not referred to; however, this case could be considered to be a case related to the form (i) among the four forms of an obstructive factor listed in the examination guidelines. In other words, “going against the technical idea of the primary cited invention” could be considered to correspond to an obstructive factor of “rendering the primary cited invention contrary to the purpose thereof”.
We have herein introduced the case that may correspond to the form (i) among the four forms of an obstructive factor. We would like to introduce other forms on another occasion. In the meantime, we will continuously monitor precedents and, upon finding an interesting one, we will introduce it to you.

Edited by Hiroki Ando

名古屋国際特許業務法人

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