Overview of inventive step
Inventive step refers to the difficulty that a person (a person skilled in the art) who has ordinary knowledge in the field of the technology to which the invention belongs cannot easily come up with the technical level at the time of filing. , "If a person having ordinary knowledge in the field of technology to which the invention belongs before filing a patent application can easily make an invention based on the inventions listed in each item of the preceding paragraph, the invention shall be referred to in the same paragraph. Notwithstanding the provisions, patents cannot be obtained. "
The inventions listed in each item of the preceding paragraph are inventions that have lost their novelty (inventions that have become publicly known).
Why do patent requirements require inventive step in addition to novelty?
Even if there is novelty, if a person skilled in the art grants an exclusive right to an invention to the extent that it can be easily considered based on a publicly known invention, etc. This is because it goes against the legal purpose of the Patent Law (Article 1 of the Patent Law) to contribute to the development of industry by granting a patent right, which is a right.
Also, if there is no breakthrough beyond natural progress, there is no protective value.
When applying for a patent, the most common reason for refusal is this inventive step violation.
Judgment as to whether or not it is an inventive step violation is made in the invention described in each claim of the claims.
If we receive a reason for refusal of an inventive step violation, each claim in the claims will be amended to satisfy the inventive step, thereby eliminating the reason for refusal of the inventive step violation.
Amendments that satisfy this inventive step limit the invention by (1) deleting the claim that does not satisfy the inventive step if there is a claim that satisfies the inventive step, and (2) adding the description of the specification to the claim. There is a correction that satisfies the inventive step.
If the examiner's judgment of an inventive step violation is the examiner's mistake, he / she can argue to that effect in the written opinion.
Based on the time of filing the patent application.
In the case of a divisional application, it is the time of the original application, and in the case of an application with a domestic priority claim, it is the time of filing the application on which the priority is based.
Specific judgment of inventive step
The examiner of the Patent Office makes the judgment of inventive step.
The following is an excerpt of the patent examination criteria.
The examiner selects one of the cited inventions most suitable for logicalization from the prior art and makes it the main cited invention, and starts from the main cited invention by the following procedures (1) to (4). It is determined whether or not a person skilled in the art can reasonably reach the claimed invention.
The examiner shall not combine two or more independent cited inventions into the main cited invention.
If there are two or more claims in the scope of claims, the examiner determines whether or not there is an inventive step for each claim.
(1) Regarding the difference between the claimed invention and the main cited invention, the examiner shall make other cited inventions based on the circumstances related to the factors (see 3.1) that act in the direction of denying inventive step. Judge whether or not it can be logicalized by applying it or considering common technical knowledge.
(2) If it is determined that the reasoning cannot be made based on (1) above, the examiner determines that the claimed invention has an inventive step.
(3) Based on (1) above, if it is determined that logic can be made, the examiner comprehensively evaluates the factors related to the factors (see 3.2) that work in the direction of affirming inventive step. Determine if the above can be logicalized.
(4) If it is determined that the reasoning cannot be made based on (3) above, the examiner determines that the claimed invention has an inventive step. If it is determined that the logic has been established based on (3) above, the examiner determines that the claimed invention does not have an inventive step.
Factors that work in the direction of denying inventive step (patent examination standards)
・ Motivation to apply the sub-cited invention to the main cited invention
(1) Relevance in the technical field
(2) Common issues
(3) Commonality of action and function
(4) Suggestions in the content of the cited invention
・ Design changes from the main cited invention, etc.
・ A mere collection of prior art
Factors that work in the direction of affirming inventive step (patent examination standards)
・ Advantageous effect
・ Obstructive factors
Example: When the sub-cited invention is applied to the main cited invention, the main cited invention is contrary to its purpose, etc.
Judgment on Judgment of Inventive Step (Intellectual Property High Court, January 28, 2009)
Satisfaction of the requirements stipulated in Article 29, Paragraph 2 of the Patent Act, that is, whether or not a person skilled in the art could easily conceive an invention according to an application based on the prior art, starts from the prior art and applies to the application. Judgment is made based on whether or not it was easy to reach the feature point (configuration different from the prior art) for the prior art of the invention.
By the way, since the feature point (configuration different from the prior art) of the invention according to the application is to solve the problem aimed at by the invention, it is necessary to objectively judge whether or not the invention is easy to reach. , It is indispensable to accurately grasp the feature points of the invention, that is, to accurately grasp the problem aimed at by the invention.
In the process of judging the ease of arrival, post-analytical and illogical thinking must be excluded, but for that purpose, unconsciously in grasping the "problem" aimed at by the invention. It is necessary to be careful not to include the elements of "solution" or "solution result" in.
Further, in order to judge that the invention is easily conceived, it is not sufficient to make a presumption that an attempt could be made to reach the feature point of the invention even when examining the contents of the prior art. It is natural that it is necessary that there is a suggestion that it should have been done in order to reach the feature point of the invention.