21 How to Control the Quality of Patent Using
Nonobviousness Requirement(*)
Overseas Researcher: Takeshi MAEDA(**)
The inventive step requirement (non-obviousness requirement) is the most important requirement that
decides the quality of a patent. This report is intended to draw suggestions for Japanese law through an overview
of discussions on the non-obviousness requirement in the United States from the perspective of control of thequality of patents. This report considers discussions on the non-obviousness requirement in a multifacetedmanner from two perspectives, that is, discussions on substantive determination standards and discussions on
the development of a procedural system. With regard to substantive determinations, determination of
non-obviousness in the United States has been changing since a recent Supreme Court judgment, and has been
coming close to Japan where the Intellectual Property High Court has recently been changing the trends ofdetermination of inventive step. In terms of procedures, the United States is making efforts to ensure the qualityof patents while meeting various needs by preparing various systems through legal revisions while Japan adopts
a policy of bringing problems under control by preparing an all-round trial for invalidation system. There is asignificant difference in procedures between Japan and the United States. It should be noted that both of them
have respective advantages and disadvantages.

Ⅰ Introduction

amply used as reference for Japan.

1

2

Awareness of Problems in This Report

The subjects of study in this report are theinventive step requirement (non-obviousness
requirement) among the requirements forpatentability as well as organizations andprocedures by which fulfillment of therequirement is determined.
This report sets the perspective of "control of
the quality of patents" for consideration. In thisreport, the term, "quality" of a patent, is used toindicate the quality which an invention should haveby fulfilling the requirements for patentability or to
straightforwardly indicate the fact that a patentfulfills the requirements for patentability.1
This report covers recent discussions on theinventive step requirement (non-obviousness
requirement) in the United States in order toseek appropriate control of the quality of patents
in the sense as mentioned above. Thereby, thisreport reveals suggestions obtained concerning
the legal system of Japan. The United States ismade subject to consideration because many
discussions have been accumulated there andthere seem to be many points that should be

Crisis of Patents and Quality of Patents
in the United States(1) FTC and NSF Reports (2003 and 2004)
The revision to the U.S. patent law in 2011
(hereinafter referred to as "AIA" or the "2011
Revision") can be regarded as the United States'
singular answer to a sense of crisis, that is, acrisis of patents. Discussions that led to theanswer started with the FTC (Federal Trade
Commission) Report2 issued in 2003 and the NSF(National Science Foundation) Report3 issued in
2004.
The NSF Report and the FTC Report havemuch in common. Both of them pointed out
problems brought about by a decrease in thequality of patents and suggested tightening of
substantive standards for granting patents andstrengthening of procedures for checking thestandards as measures for improvement.
Concerns about the quality of patents and thenecessity of promoting improvement of thequality from both substantive and procedural
perspectives had been commonly recognized in
the United States.

(*) This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2012 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in
expression or description of the translation. When any ambiguity is found in the English translation, the original
Japanese text shall be prevailing.
(**) Associate Professor, Graduate School of Law, Kobe University, at Stanford University Law School, as Overseas
Researcher under the Program for the FY2012.
●

IIP Bulletin 2013 Vol.22

1 ●(2) Lawmaking and Judicial Movements
toward Improvement of the Patent
SystemMovements to revise patent law began in
response to the aforementioned two reports.
However,thefactemergedthatthesemiconductor/software industries and thechemical/pharmaceutical industries have different
interests in patents, and lawmaking made little
progress.
On the other hand, the judiciary showed
movements to reform the patent system. The
eBay decision 4 in 2006 put a certain brake on
problems, such as abuse of injunction by a rightholder who does not work a relevant patent inrelation to a software patent, etc., and a series of
judgments of the Court of Appeals for theFederal Circuit (CAFC) put restraints on theamount of damages. 5 In addition, the Supreme
Court tightened standards for obviousness
through the KSR decision. 6 Therefore, theproblem of the quality of patents is expected to besignificantly improved at least in terms of thesubstantive aspect.
After that, the patent reform bill was finallypassed and enacted in 2011. The most distinct
characteristic of the Patent Reform Act of 2011
(AIA) is a shift to the first-to-file system from theconventional first-to-invent system. 7 Anotherdistinctcharacteristic
isthesignificant
development of a mechanism for ensuring thequality of patents through expansion ofprocedures for disputing over the validity of apatent at the USPTO. A mechanism to ensure thequality of patents through procedures at the
USPTO was established.
(3) Discussions on the Crisis of Patents
The academy has also developed various
discussions amid the progress of discussions on
the reform of the patent system as mentioned
above.
James Bessen and Michael Meurer provided
for the first time a comprehensive empiricalevaluation of whether the patent system has
produced good results in a paper8 titled "Patent
Failure."9 According to the empirical evaluation
conducted by them, patents have not been able togive sufficient incentive to inventors at least insome industrial fields. In industries other thanthe chemical/pharmaceutical industries, costs
have continued to significantly exceed earnings. 10
The adverse effect thereof is significant
particularly in the software industry.11
As causes thereof, Bessen, et al. point out●

that boundaries between rights are unclear andthat there are too many small patents,12 and see a
decline in the notice function of patents (Patent
Notice) as a problem.13 As one of the measures tocope with too many patents, Bessen, et al. cite
working on the problem of the quality ofpatents.14 Although the problem of the quality ofpatents constitutes a mere part of the problems of
the patent system, it has been pointed out as animportant part.
In a paper 15 entitled "Patent Crisis," Burkand Lemley point out that the patent system isdoing well in the pharmaceutical/biotechnology
industries but that problems are arising in the IT
industry. 16 The basic position of said paperemphasizes the necessity of changing thehandling with respect to each industry under thesituation where circumstances significantly differ
in each industry and requiring the court to makeappropriate determinations on a case-by-casebasis.17 Burk, et al. state that it is important forthe court to make good use of policy levers18 in
the patent law and that the non-obviousness
requirement is one of such policy levers. The
characteristics of their analysis are emphasis on
the roles of the court, and, for the problem of
quality, expectations for the court setting
appropriate standards are emphasized.
Differently from the fact that the
government reports focused attention on thequality of patents, the quality of patents isunderstood as a mere part of the problems inscholars' papers. In addition, with regard to thesubstantive methods of strengthening monitoringof quality, scholars' papers explain roles which thecourt should play in detail. It seems to be very
important to consider the problem of quality fromboth substantive and procedural perspectives
while understanding it as no more than one
problem in the large context.

Ⅱ Requirements for Patentability
and Quality of Patents in the
United States
1

Regarding
Requirements
forPatentability in the United States andTheir SignificanceFirst of all, there is the patentable subject
matter requirement. The requirement is
attracting attention as Supreme Court judgments
were rendered 19 20 in recent years. Thisrequirement is regarded as playing the role ofproviding for the scope of defense of the patent
2 ●IIP Bulletin 2013 Vol.22

law.
There are three requirements for obtaining apatent right in the United States, utility, novelty,
and non-obviousness. These three requirements
are considered as playing the role of directly
controlling the "quality" of patent rights.
The utility requirement21 can be understoodas one that provides for the timing of grant of apatent right, that is, an invention becomes
patentable only after its maturity reaches acertain level2223. This requirement, as same as thepatentable subject matter requreiment, is rather
playing the role of categorically excluding
inventions with respect to each field of
inventions.
The non-obviousness requirement is said tobe the most important requirement among thethree substantive requirements for legal
professionals who engage in patents. 24 If
differences between a claimed invention and priorart are obvious to a person of ordinary skill in theart as of the filing, it is impossible to obtain apatent right for the invention. 25 The
non-obviousness requirement mainly assumes
the role of deciding whether an invention iseligible for a patent. The novelty requirement is
considered as functioning to give incentive forinventors to pursue not existing inventions but
new inventions, 26 and it occupies an important
place in the problem of the quality of patents.
However, it is discussed in common with thenon-obviousness requirement in many parts.
In order to obtain a patent right, it is also
necessary that the claims and description fulfill
the disclosure requirements (which refer to theenablement requirement and the written
description requirement). 27 These requirements
play the important role of limiting the scope towhich the claims of a patent can be extended. 28
This is a problem relating to the form rather thanthe content of an invention.
According to the above, all of eligibility for apatent,theutility/novelty/non-obviousness
requirements, the enablement requirement, andthe written description requirement areimportant requirements and are regarded as
relating to the quality of patents. However,
eligibility for a patent and the utility requirement
categorically relate to the industrial and technicalfields to which an invention pertains, and areslightly away from the quality of individual
patents, on which this report focuses attention. In
addition, although the disclosure requirements
are important, they can be said to be relating to
the method of writing a description rather than●

IIP Bulletin 2013 Vol.22

the content of an invention. Consequently, it isconsidered beneficial to consider the problem,
while focusing attention on novelty andnon-obviousness,inparticular,thenon-obviousness requirement, in this report.
2

Non-Obviousness Requirement in the
United States and Its Significance(1) Non-Obviousness Requirement
The novelty requirement requires that aclaimed invention is not identical with prior art.
However, the non-obviousness requirement
denies patentability even if there are differences
between a claimed invention and prior art if thedifferences are obvious to a person of ordinary
skill in the art.
The fulfillment of the non-obviousness
requirement is determined through the following
process.29 First of all, as matters of fact, (A) thescope and content of the prior art are decided, (B)differences between the claimed invention andthe prior art are confirmed, and (C) the level ofordinary skill in the art is decided. (These arereferred to as the "Graham factors".) Then,
whether the differences are obvious isdetermined based on these facts through a legal
decision. Objective indicators relating toinventions, which are called "secondary
considerations," sometimes become of help inmaking such a determination.
In order to determine that an invention is
obvious, the analysis that the invention is obvious
should be made explicit. 30 Non-obviousness isdetermined on a case-by-case basis, and it is thus
difficult to establish general determination
standards. However, the typological patterns ofanalysis have been established.31
Secondary considerations are objective
indicators that are used in determining
non-obviousness. The examples thereof arecommercial success, long-felt need, andunexpected results. 32 They are considered as
preventing "hindsight" and securing objective
determinations.33 However, there is a question ofto what extent secondary considerations areconnected
tothedeterminationof
non-obviousness.34(2) Rationales for the Non-Obviousness
Requirement
As a rationale for the non-obviousness
requirement, it is said that patent-based incentive
is not required to create an obvious idea.35 Thisline of thought focuses on dividing inventions that
3 ●

substantively require grant of an incentive andthose that do not.
In addition, it is also explained that the
non-obviousness requirement prevents incentive
from diluting due to grant of patents to obvious
inventions36 and that the requirement is to cut
costs for search and licensing by restraining thenumber of patents. 37 These explanations focus
attention on the problem of transaction costs inthe process of using inventions and instruct thenecessity of reducing the number of patents.
Many scholars pay more attention to the firstline of thought as a rationale that derives specificdetermination standards for non-obviousness.
This idea can be classified into two types, a line ofthought focusing attention on the content of
inventions and a line of thought focusing attention
on the processes through which an invention iscreated.
In the first type, the non-obviousness
requirement is seen as a standard for sorting out
inventions that require grant of an incentive. 38
This is a line of thought made throughdevelopment of the "inducement standard" 39
indicated in the Graham decision. Duffy, etc. havedeveloped the argument that this standard can be
operated as a specific standard for determining
obviousness.40
On the other hand, there is also a strong
opinion that it is difficult to apply the inducement
standard as a specific code of determination.
Therefore, the idea of considering obviousness asa method of controlling inventors' inventive
behaviors has developed. Merges asserts that the
non-obviousness requirement changes inventors'
behaviors and has the inventors venture into thecreation of inventions of which patentability isunclear.41 Moreover, Meurer also points out thepossibility that companies, etc. will tend to adopt
research projects with low technical difficulty if
protection by patents is not available, and statesthat optimum social conditions can be realized
through protection of only those with hightechnical difficulty.42
According to the above, the results ofanalysis in theories are that patents should not be
granted to all new inventions in order to give anappropriate incentive to inventors and that the
number of inventions should be further reduced
as a whole in consideration of the problem ofsubsequent transaction costs.

3

Development of Case Laws Concerning
the Non-Obviousness Requirement in
the United States43(1) Outline
The non-obviousness requirement was put inthe statutory form at the time of the enactment of
the Patent Act of 1952. Then, a framework fordeterminationof
non-obviousness
wasestablished by the Graham decision. After that,the theory of non-obviousness has developed
through the development of judgments in trials at
lower courts. However, the theory of
non-obviousness entered a new stage due to the
KSR decision rendered by the Supreme Court in2007.
(2) Up to the Enactment of the Patent Act of1952
Although novelty and utility have been
consistently required since the Patent Act wasenacted in 1790, non-obviousness has not been.
Under the 1793 Act, it is interpreted that additionof " change in principle "44 is required to obtaina patent. This has developed into thenon-obviousness requirement.
The Supreme Court judgment on Hotchkiss v.
Greenwood 45 established a standard, that is, the"degree of skill and ingenuity" has to be morethan the product of an ordinary engineer.46 This
judgment is meaningful in that it set up thedirection of determining non-obviousness basedon a person of ordinary skill in the art. However,at the same time, it is problematic that using"skill and ingenuity" as a standard was strictlyinterpreted in subsequent court precedents. The
Cuno decision in 1942 came to determine that a"flash of creative genius" is required to obtain apatent.47
The
1952
Act
providedforthenon-obviousness requirement in Section 103 andclearly stipulated that a patent shall not be
granted to an "obvious" invention. In addition, thesecond sentence of Section 103 clarified that theability of the inventor and the manner in which
the invention was made are irrelevant topatentability. This seemed to have lowered thestandards for patentability that had become
excessively high. However, how the newstandards would be applied by the court remained
unclear in some parts.
(3) Graham Decision and TSM Test
In 1966, the Supreme Court completed aframework for determination of non-obviousness●

4 ●IIP Bulletin 2013 Vol.22

in the Graham decision.48 In the Graham decision,
the Supreme Court considered the Hotchkiss
decision in 1851 as one that formulated generalconditions for patentability, and understood that
the Patent Act of 1952 also does not change theconventional general standards. On the other
hand, the Supreme Court confirmed that thesecond sentence of Section 103 is generally
understood as having the intention to abolish the"flash of creative genius" standard that was
indicated in the Cuno decision.
The Graham decision made clear that
determination of non-obviousness is made basedon three facts, that is, the content and scope of
the prior art, differences between the prior art
and the claimed invention, and the level of aperson of ordinary skill in the art. In addition, it
also indicated that commercial success, etc. may
serve as secondary considerations in determining
non-obviousness.
Although the determination standards weremade clear by the Graham decision, unclear
points remained in terms of the specific scenes ofapplication. After the CAFC was established in1982 as a court which handles patent-relatedcases in a concentrated manner, the standards fordetermining non-obviousness started developing.
Then, the "TSM standard" had been graduallyformed at the CAFC as the only one standard for
determining non-obviousness. TSM means"teaching, suggestion or motivation." The content
of the TSM standard is that teachings ofreferences can be combined to establish
obviousness only if there is some suggestion or
incentive to do so.49
The TSM standard was accepted as the
CAFC'sstandardfordetermining
non-obviousness and has become established.
This situation had been criticized in the FTC and
NSF Reports as being excessively rigid, as
mentioned above.
(4) KSR Decision50
The KSR decision is evaluated as a judgmentthat denied the conventional application of the
TSM standard by the CAFC and drasticallychanged the direction of determination of
non-obviousness.
The Supreme Court ruled that a court canconsider the inferences and creative steps aperson of ordinary skill in the art would employ,and clearly stated that it denies CAFC's rigid
approach. Then, the Supreme Court stated that it
can be important to identify a reason that would
have prompted a person of ordinary skill in the●

IIP Bulletin 2013 Vol.22

art to combine the elements but that helpful
insights need not become rigid and mandatory
formulas and if it is so applied, the TSM standard
is incompatible with the Supreme Court's
precedents.
The Supreme Court judgment denied
determination of non-obviousness based on theconventional rigid framework, and confirmed that
non-obviousness should be determined byreaching back to the principle of comprehensively
determining whether an invention is obvious to aperson of ordinary skill in the art.
(5) After the KSR Decision
It is said that the trends of judgments
concerning determination of obviousness in the
United States changed in response to the KSR
decision. It is said that more applications andpatents have been concluded as obvious as it has
become possible to draw such conclusion moreeasily. 51 According to empirical study, thestandards for non-obviousness clearly became
stricter after the KSR decision, and patentability
has become more easily deniable. The tendencyof easier affirmation of obviousness is expected tocontinue in the future based on flexible standards.

Ⅲ System for Determination of
Fulfillment of the Requirements
for Patentability in the UnitedStates1

Outline of Legal Procedures Concerning
Patents in the United States

The U.S. patent system also adopts thesubstantive examination principle. However,determination of fulfillment of the requirementsfor patentability in examination is nothing morethan a rough "first screening,"52 and there remains
much room for disputing over the requirements forpatentability even after the grant of a patent right.
As means of disputing over validity after the
grant of a patent right, there are ex-partereexamination, post grant review, and inter partes
review (these are at the USPTO) as well as adefense of invalidity in an infringement action anda declaratory judgment action of invalidity (these
are at the court).
The United States Patent and Trademark
Office (USPTO) and the federal courts (Federal
District Courts, Court of Appeals for the Federal
Circuit (CAFC), and Supreme Court) mainly
engage in patent-related procedures in the UnitedStates. At the USPTO, there are procedures
5 ●conducted by examiners and those conducted by
the Patent Trial and Appeal Board (PTAB). The
PTAB is an administrative body but is a bodysimilar to the court, and administrative judges
make determinations.53 Actions can be filed with
the Federal District Courts around the country.
Appeals from the PTAB or District Courts areconcentrated in the CAFC. The Supreme Court isabove the CAFC, and it is pointed out that its
influence has been increasing in recent years.54

Ex-parte reexamination can be said to be themost simple and convenient procedure for
disputing over patentability again after the grantof a patent. The requirements for commencing
the procedure are not high. In addition, a third
party can perform the procedure under anonymity,
and the parties are never bound by estoppel in an
action. However, the degree to which a third
party can engage in the procedure is very
limited.61

2

4

Examination

The request for examination system does notexist in the United States,55 and examination isnecessarily conducted if an application is filed in agiven format. All the requirements forpatentability are subject to examination, but thehours of examination per application are very
limited. A system of information provision by
third parties was established by the AIA.
The examination of the non-obviousness
requirement starts with an examiner's showing"prima facie obviousness." 56 An examiner bears
the burden of proof that requires first showing
prima facie obviousness, and a patent is granted if
the examiner cannot show it. A clear
demonstration is required for an examiner toshow obviousness. 57 The final proof of
obviousness by an examiner requires a"preponderance of evidence," and the examiner
has to show it while including evidence submitted
by the applicant.58
Examiners are technical specialists. An
applicant can file an appeal with the PTAB if
he/she is dissatisfied with an examiner's
determination. At the PTAB, the applicant canobtain a determination by an administrative judge
who has expertise in both patent law andtechnology.
3

Ex-Parte Reexamination

Ex-parte reexamination is a system by which
one can request the USPTO for thereexamination of a patent by citing prior arts thatare related to the patentability of the patent. 59
Any person, including a patentee, can file arequest for reexamination.
A "substantial and new question ofpatentability" 60 must be shown for thecommencement of an ex-parte reexamination.
The requirements for patentability that can bereviewed in an ex-parte reexamination are thenovelty and non-obviousness requirements.
●

Post Grant Review

The post grant review (PGR) system wasestablished through the 2011 Revision. Any
person other than the patentee may file a petition
for a PGR within nine months from the date of the
grant of the patent.62 Almost all requirements forpatentability can be subject to a PGR.63
The requirement for the commencement of a
PGR is that information presented in a petition, if
such information is not rebutted, demonstrates
that it is "more likely than not" that at least one of
the claims is unpatentable.64
The proceeding of a PGR is carried forward
at the PTAB based on conflict between two
parties.65 In a PGR, it has become possible to use
discovery in the same manner as in an action.
However, the subject of discovery is limited.66 Ina PGR, a petitioner bears the burden of proving
unpatentability. Presumption of validity does notwork, and it is only necessary to prove it by a"preponderance of evidence."67
Estoppel is imposed on the parties who havereceived a final decision in a PGR.68 The rise of
estoppel can be one of the disadvantages for apetitioner of a PGR.
Through a PGR, it is possible to go through arelatively careful proceeding in that a petitioner
can receive a determination made by anadministrative judge under a structure similar tothe court and that discovery is also possible,
though the proceeding is simpler than that at the
court. On the other hand, in terms of costs, costs
for a PGR are considerably lower than those foran action.69 Therefore, PGR can be evaluated as aprocedure possessing the good features ofprocedures at the court and ex-partereexamination.
5

Inter Partes Review

Inter partes review (IPR) is a procedure thatwas newly established by the AIA. Any person
can file a petition for IPR after nine months have
6 ●IIP Bulletin 2013 Vol.22

passed since the date of the grant of a patent(after the nine months, a petition for a post grant
review cannot be filed). 70 Reasons that can be
disputed are limited to the novelty or
non-obviousness requirement based on prior art
consisting of patents or printed publications.71 As
for the requirement for the commencement of an
IPR, commencement of the procedure is decided
when there is a "reasonable likelihood" that thepetitioner would prevail with respect to at least
one of the claims.72
The proceeding of an IPR is also carriedforward at the PTAB based on conflict between
two parties.73 In addition, discovery is available.
However, the subject of discovery is limited in
the same manner as PGR, and the limitation isstricter than PGR.74 In an IPR, a petitioner alsobears the burden of proving unpatentability, and it
is only necessary to prove it by a "preponderanceof evidence."75
In an IPR, estoppel is also imposed on theparties who have received a final decision, in thesame manner as in a PGR.
IPR has characteristics in common with PGR.
It can be summarized as a procedure by which it
is possible to go through a relatively fulfilling
proceeding more simply and at a lower cost 76
than at the court.

for invalidity. In order to reverse suchpresumption, it is necessary to prove invalidity
with "clear and convincing evidence."8182
As these procedures are carried out at the
court, discovery can be used in the same manneras ordinary civil actions, and a determination by ajudge can be obtained. However, District Courtsin charge of the first instance involve instability
due to problems such as jury and forum shopping.
Furthermore, costs for these procedures aredramatically higher than those for procedures at
the USPTO.83

6

Ⅳ Suggestions for Japanese Law

Defense in an Infringement Action and
Declaratory
Judgment
ActionofInvalidity

In a patent infringement action, the alleged
infringer can make a defense to the effect that theaction should be dismissed as the patent is invalid.
In addition, the alleged infringer can also receivea declaratory judgment to the effect that thepatent is invalid. That is, a declaratory judgment
as remedy for a party is acknowledged in the
United States,77 and this remedy is also available
for the validity of a patent.
It has been understood in the past that a"reasonable threat" that one will face aninfringement action is necessary to institute a
declaratory judgment action of invalidity. 78
Therefore, cases where an action can be
instituted
werelimited.
However,the
MedImmune decision in 2007 changed the
CAFC's conventional precedents, 79 and thereby,
the possibility of being able to institute a
declaratory judgment action was expanded.
As it may be presumed that a patent isvalid,80 the party against the patentee is to bear
the burden of proving facts that serve as the basis●

IIP Bulletin 2013 Vol.22

7

Summary

Through procedures at the USPTO, it ispossible to dispute over the invalidity of a patent
simply and at a low cost, and a specialized, stable
determination can be easily obtained. On theother hand, there are certain limitations on usable
evidence and reasons that can be disputed.
Procedures at the court have disadvantages,
specifically, heavy costs and labor. In addition,
hurdles are high for the timing when theprocedures are available as well as for proof ofinvalidity. However, there are advantages,
specifically, one-time settlement together with an
infringement action and availability of discovery.

1

Inventive Step Requirement in Japan(1) Inventive Step Requirement
Under Japanese law, determination of
inventive step is made based on a framework
consisting of (1) finding of the invention inquestion, (2) finding of the cited invention, (3)finding of points of identity and difference
between the invention in question and the citedinvention, and (4) determination concerning thepoints of difference (determination of whether theinvention in question could have been easily
arrived at).84 Processes (1) to (3) are findings offacts that serve as premises of a determination,85
and determination in (4) is made based on thosefacts. Determination in (4) is made based on a
person of ordinary skill in the art. Therefore, thecontent of knowledge of a person of ordinary skill
in the art ("common general technicalknowledge") 86 is also a fact that serves as apremise of determination in (4).87 Consequently,
facts that serve as premises of determination ofwhether the invention in question could havebeen easily arrived at in (4) are the invention in
7 ●question, the cited invention, and common
general technical knowledge, which correspond to
the three factual factors pointed out in the
Graham decision in the United States.
In order to show that the invention inquestion could have been easily arrived at inJapan, it is necessary to demonstrate (establish alogical argument) that the invention in question
could have been easily made. 88 If one canestablish such a demonstration in a rationalmanner, inventive step is denied. On the other
hand, if one cannot establish such ademonstration in a rational manner, inventive
step is affirmed. 89 Though inventive step isdenied if demonstration of the fact that theinvention in question could have been easily
arrived at succeeds, there are some establishedpatterns of demonstration. The patterns ofestablishing a logical argument are similar to
those in U.S. practice. Moreover, although an
indicator, "advantageous effect (unexpected
effect)," is often used,90 this functions in thesame manner as secondary considerations in the
United States.
In the current practice of determination of
inventive step at the Intellectual Property High
Court, it is required to demonstrate a motivation,that is, the fact that a person of ordinary skill in
the art could have easily arrived at the invention inquestion, by specifically indicating the existence ofa suggestion, etc. This was brought about by arecent change in the trends of judgments.91 The
inventive step requirement in Japan has become
increasingly relaxed while the non-obviousness
requirement in the United States has become
stricter. Thereby, both countries are meeting
halfway.
(2) System for Determination
There are also some systems to dispute overinventive step in Japan. However, options in Japanare considerably simpler than in the UnitedStates. There are examination, trial forinvalidation, and defense of invalidity in an
infringement action.
It can be said that the quality of examinationin Japan is higher than the United States; however,even so, examination is not conducted over a longtime. In Japan, there is an established mechanism
to check fulfillment of the requirements forpatentability again after the grant of a patent, inthe same manner as the United States.
Any person can file a request for a trial forinvalidation after the grant of a patent.92 In a trial
for invalidation, parties can receive the●proceedings through procedures equivalent to a
civil action.93 The fee for filing a request for a
trial for invalidation is considerably lower thanthat in the United States. Differently fromex-parte reexamination in the United States, thetrial for invalidation system is cumbersome, as
one who has filed a request for a trial forinvalidation has to engage in the trial as a party. A
system that makes examination by documentary
proceeding a principle is not available atpresent. 94 Costs for a trial for invalidation are
considerably lower than those for a PGR and IPR,
and the trial for invalidation system is one thatenables parties to easily receive fulfilling
proceedings.
Though it is permitted to make a defense ofinvalidity in an infringement action, 95 it is
impossible to institute a declaratory judgment
action of invalidity with the court in Japan. 96
Determination of invalidity in Japan is nothing
more than determination made in the reasons forthe judgment, and thus does not have res judicata.
In addition, neither estoppel nor any other effectarises in principle.
2

Suggestions for Japanese Law Made by
U.S. Law

Substantive standards in Japan and those in
the United States have been getting closer. It isnecessary to continuously be conscious of thebalance between appropriate elimination ofhindsight and securing of the quality of patents inmaking a determination.
A variety of options for systems for theexamination of patentability are available in the
United States. On the other hand, trial forinvalidation is almost the only option in Japan.
However, it is a considerably user-friendly andall-round system.
3

Future Prospects

With regard to the inventive step andnon-obviousness standards, it is important toestablish standards that adequately restrain thenumber of patents while avoiding the problem ofentrance of hindsight. It is necessary toaccurately understand problems by more
empirically studying the trends of determinationof inventive step in Japan. It is necessary toconsider the trends of determination of inventive
step and changes in the ratio of patents being
invalidated in more detail. Moreover, it isnecessary to verify whether differences in the
8 ●IIP Bulletin 2013 Vol.22

trends of determination between Japan and theUnited States have actually ceased to exist
through these works.
With regard to procedural aspects, it isnecessary to develop discussions on an
institutional design that is desirable formaintaining high-quality patent rights, based on
empirical data in Japan and the United States.
1

For example, the quality of a patent may be defined asindicating to what extent a patent substantively
contributes to the development and disclosure of a newtechnology or the economic value of a patent (Ronald J.
Mann and Marian Underweiser, A New Look at Patent
Quality: Relating Patent Prosecution to Validity, Journalof Empirical Legal Studies vol.9 Issue 1 1(2012)). In
this report, the definition as mentioned in the text was
adopted in the same manner as in Mann & Underweiser(2012).
2
Federal Trade Commission, To Promote Innovation:
The Proper Balance of Competition and Patent Law and
Policy (October 2003)
3
National Academy of Science, A Patent System for the
21st Century (2004)
4
eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006)
5
Lucent technology v. Gateway Inc., 580 F.3d 1301 (Fed.
Cir. 2009)6
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)
7
Through the revision of Section 102 of the patent law,
the standard time for determination of novelty waschanged from the time of making an invention to theeffective filing date. However, it is necessary to notethat the change comes with the later-mentioned
one-year grace period.
8
James Bessen & Michael J. Meurer, PATENT FAILURE:
HOW JUDGES, BUREAUCRATS AND L AWYERS PUTINNOVATORS AT RISK (Princeton University Press, 2008)(hereinafter cited as "Bessen & Meurer (2008)").
9Bessen & Meurer (2008) at 3.
10
Bessen & Meurer (2008) at 106-109, 138-142.
11
Bessen & Meurer (2008) at 187-194.
12
Bessen & Meurer (2008) at 10.
13
Bessen & Meurer (2008) at 18.
14
Bessen & Meurer (2008) at 26, 247.
15
Dan L. Burk and Mark A. Lemley, PATENT CRISIS AND
HOW THE COURTS CAN SOLVE IT (The University of
Chicago Press, 2009) (hereinafter cited as "Burk &Lemley (2009)").
16
Burk & Lemley (2009) at 3-5.
17
Burk & Lemley (2009) at 5, 95-108. As the bases
thereof, said paper points out that industry-specificlawmaking brings about the problem of compliancewith the TRIPS Agreement and that the enactment of
the Patent Reform Act was running into difficulties at
Congress, as well as the institutional superiority of thecourt.
18
Burk & Lemley (2009) at 109-130. Burk and Lemley
had already shown the idea of policy levers in an
earlier paper, and thereby indicated that it is possible
to control patent policy by the court's raising andlowering the determination standards for various
requirements that exist in the patent law (Dan L. Burk●

IIP Bulletin 2013 Vol.22

and Mark A. Lemley, Policy Levers in Patent Law, 89
VA. L. REV. 1575, 1688 (2003)).
19
Bilski v. Kappos, 130 S. Ct. 3218, 561 US __, 177 L. Ed.
2d 792 (2010). Claim 1 claimed a method for hedging
risk. In the judgment, the court denied eligibility for apatent, deeming the method to fall under an abstract
idea. The judgment is worthy of attention in that it did
not deny the "machine or transformation test" which
the CAFC had adopted as a method of determining
whether an invention falls under a "process" butdetermined that the test is not the only one
determination method and that it did not adopt theopinion of Justice Stevens, etc. that categorically
excludes business methods from patentability.
20
Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. ___ (2012). The invention
in question was related to a drug for autoimmune
diseases, thiopurine. It is a method of measuring theamount of metabolites in the blood of a patient towhom thiopurine has been administered and adjusting
the dose depending on the measured amount. In the
judgment, the court determined that the claim is
nothing more than a natural law that indicates thecorrelations between metabolites and dose, and denied
protection by patent.
21
According to Robert P. Merges and John F. Duffy,
PATENT L AW AND POLICY: CASE AND MATERIAL 5TH
EDITION (LexisNexis, 2012) at 211, a phrase in Section
112 ("as to enable … use the same") is also considered
as requiring the existence of utility in an invention.
22
Brenner v. Manson, 383 U.S. 519 (1966).
23
See Merges and Duffy supra note 21 at 256-259. It
indicates through economic analysis that it is beneficial
to grant a patent at a relatively early stage (therefore,
based on loose standards for utility).
24
For example, it is indicated as the "ultimate conditionof patentability" in John F. Witherspoon ed.,NONOBVIOUSNESS- THE ULTIMATE CONDITION OF
PATENTABILITY (1980).
25
Section 103 of the patent law: A patent for a claimed
invention may not be obtained, notwithstanding thatthe claimed invention is not identically disclosed as set
forth in section 102, if the differences between theclaimed invention and the prior art are such that theclaimed invention as a whole would have been obvious
before the effective filing date of the claimed invention
to a person having ordinary skill in the art to which theclaimed invention pertains. Patentability shall not be
negated by the manner in which the invention was
made.
26
Robert P. Merges and John F. Duffy, PATENT LAW AND
POLICY: CASE AND MATERIAL 5TH EDITION (LexisNexis,2012) at 428.
27
35 U.S.C. 112 Specification
The specification shall contain a written description of
the invention, and of the manner and process ofmaking and using it, in such full, clear, concise, andexact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor ofcarrying out his invention.
28
Merges and Duffy supra note 21 at 265.
29
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459

9 ●(1966).
In re Kahn, 441 F.3d 977, 988 (CA Fed. 2006), KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
31
The following add-up is based mainly on the add-up of
MPEP §2142.
32
Graham v. John Deere Co., 383 U.S. 1, 18(1966).
33
Gore v. Garlock 721 F.2d 1540 , 1553(Fed. Cir. 1983)
points out that secondary considerations act as"insurance" against errors due to hindsight.
34
Robert P. Merges, Economic Perspective on
Innovation: Patent Standards and Commercial Success,76 Cal. L. Rev. 803 (1988).
35
Merges and Duffy supra note 21 at 622-624.
36
Id. at 623.
37
Id. at 624.
38
The line of thought introduced here was indicatedmainly in Michael Abromowicz and John F. Duffy, The
Inducement Standard of Patentability, 120 Yale L.J.
1590 (2011).
39
Graham v. John Deere Co. 383 U.S. 1, 11 (1966).
40
Abromowicz and Duffy supra note 38 at 1596.
41
Robert P. Merges, Uncertainty and the Standard ofPatentability, 7 High tech. L. J. 1 (1993).
42
Michael J Meurer and Katherine J. Strandburg, Patent
Carrots and Sticks, 12 Lewis & Clark L. Rev. 547(2008).
43
Edmund Kitch, Graham v. John Deere Co.: New
Standards for Patents, 1966 SUP. CT. REV. 293(1966) is
informative with regard to the development before theGraham decision, though it is old. This report ismainly based on John Duffy and Robert P. Merges, The
Story of Graham v. John Deere Company: Patent Law's
Evolving Standard of Creativity in INTELLECTUAL
PROPERTY STORIES (Jane C. Ginsburg and Rochelle
Cooper Dreyfuss ed., 2006).
44
Evans v. Eaton, 20 U.S. 356 (1822).
45
Hotchkiss v. Greenwood, 52U.S.(11 How.)248 (1851).
46
Id. at 267.
47
Cuno Engineering Corp. v. Automatic Devices Corp.,
314 U.S. 84 (1941).
48
Graham v. John Deere Co., 383 U.S. 1, 18(1966).
49
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572 (Fed. Cir. 1984), Al-Site Corp. v. VSI
International, Inc. 174 F.3d 1308 (Fed. Cir. 1999).
50
KSR International CO. v. Teleflex Inc. 550 U.S. 398(2007).
51
Jennifer Nock & Sreekar Gadde, Raising the Bar for
Nonobviousness: An Empirical Study of Federal
Circuit Case Law Following KSR, 20 Fed. Cir. B.J. 369(2011).
52
Merges and Duffy supra note 21 at 1046. However,presumption of validity is obtained pursuant to 35
U.S.C. § 282.
53
Administrative judges are not equivalent to ordinary
judges (called "Article III Judge" in the United Stateswith its origin in Article III of the Constitution) but
Article I Judge, and the consent of the Senate is not
required for their appointment.
54
John F. Duffy, The Festo Decision and the Return of
the Supreme Court to the Bar of Patents, 2002 S.Ct.
Re. 273 (2003) (which points out the role which theSupreme Court played in forming case law for
patents).
55
However, 37 C.F.R. 1.103(d) sets the examination
30●

deferral system, and on request of the applicant, adeferral of examination may be granted for a period notexceeding three years.
56
In re Linter 458 F.2d 1048 (CCPA 1976), MPEP§2142.
57
See supra note 30.
58
MPEP§2142.
59
35 U.S.C. § 301 and 302.
60
If a reference is presented in a new light, it may be
regarded as raising a substantial and new question,even if it has already been reviewed at the USPTO(MPEP§2216).
61
After the commencement of reexamination is decided,
the patentee may file a statement, and a person who
has requested reexamination may file a reply thereto.
After such exchange ends, examination by an examiner
starts (35 U.S.C. §304). A person who has requested
reexamination can engage in the procedure to a certain
extent by filing such a reply, but his/her engagement isstill limited.
62
35 U.S.C. § 321.
63
35 U.S.C. § 322(b). § 282(b)(2)(3) provides for reasons
which can be submitted as a defense of invalidity in an
infringement action, and the reasons listed there canbe used as reasons for opposition. It is possible todispute over utility, novelty, inventive step,
non-obviousness, and the written description
requirement under § 112 (excluding the best mode
requirement) as well as the requirements forapplication for reissue in the case of application forreissue.
64
35 U.S.C. § 324(a). However, upon a petition, thepatentee may file a preliminary response to thepetition (§ 323). This positioning is mentioned later.
65
35 U.S.C. § 326(c).
66
35 U.S.C. § 326(a)(5) and 37 CFR 42.51-.
67
35 U.S.C. § 326(e).
68
35 U.S.C. § 325(e)(1)(2).
69
Where the number of claims is 20 or less. $600 is
added with respect to each claim. An action in which
the value of the subject-matter is less than $1 million
costs $0.35 million up to discovery and $0.65 million
for the entire action. An action in which the value ofthe subject-matter is $25 million or more costs $3
million up to discovery and $5 million for the entire
action (2011 Report of the Economic Survey, American
Intellectual Law Association).
70
35 U.S.C. § 311.
71
35 U.S.C. § 311(b).
72
35 U.S.C. § 314(a).
73
35 U.S.C. § 316(c).
74
35 U.S.C. § 316(a)(5).
75
35 U.S.C. § 316(e).
76
See supra note 69.
77
Declaratory Judgments Act 28 U.S.C.
78
C.R. Bard, Inc. v. Schwartz, 716 F.2d 874 (Fed. Cir
1983), Teva Pharms. USA, Inc v, Pfizer Inc., 395 F.3d
1324 (2005).
79
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118(2007).
80
35 U.S.C. § 282(a).
81
Also see Microsoft Corp. v. i4i Limited Partnership,
131 U.S. 2238 (2011) and Donald S. Chisum, 2-5
CHISUM ON PATENTS §19.02 (2012).
82
35 U.S.C. § 282(a).

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83

See supra note 69.
Examination Guidelines for Patent and Utility Model inJapan, Part II, Chapter 2 Novelty and Inventive Step.
In the judgment of the Tokyo High Court of October 15,
2002 (1999(Gyo-Ke)102), the court states that thisframework is a reasonable and established method.
85
However, it is necessary to note that finding of theinvention in question is not finding of a fact in a pure
sense as it includes a legal decision, that is, claim
interpretation.
86
According to the Examination Guidelines, Part II,
Chapter 2, 1.2.4(3), "common general technicalknowledge" means "obvious knowledge derived fromthe general knowledge or experience of a person
skilled in the art."
87
Note that to what extent the content of knowledge isincluded in common general technical knowledge is alegal decision though the content of knowledge itself isa fact.
88
Examination Guidelines, Part II, Chapter 2, 2.4. Also
see judgment of the Intellectual Property High Court,
December 28, 2007, 2007(Gyo-Ke)10027.
89
Nobuhiro Nakayama and Naoki Koizumi, ed., Shin
Chukai Tokkyoho (New Patent Act with notes) (Seirin
Shoin, 2011), 261-263 [Naito and Sakai (Jiro)] andTakeshi Maeda and Junko Kobayashi, "Shinposei
handan no hoteki na kozo" (Legal structure ofdetermination of inventive step), Patent, vol. 63, no. 7(2010); 119 and 125-126.
90
Maeda and Kobayashi supra note 89. Incidentally, in
the Inventive Step Study Committee Report, anadvantageous effect is subtly differently positioned
between the cases of combination and replacement andthe cases of design variation, etc. This is probably
because of the idea that a mere design variation, etc.
may be determined to have been easily arrived at evenwith an advantageous effect. However, what effect canbe said to be "advantageous" and "unexpected" is not amatter of fact but a matter of evaluation. Therefore,
consistency can probably be secured even without
drawing a distinction as in the report if it issummarized that a hurdle for recognizing a mere
design variation, etc. as "advantageous" is higher.
91
Judgment of the Intellectual Property High Court,
January 28, 2009, Hanji, no. 2043, at 117 [Connecting
member for circuit].
92
Article 123, paragraphs (1) and (2) of the Patent Act.
However, only a true right holder can file such arequest for the reason of misappropriation. Any person
can file such a request for the reason of violation of theinventive step requirement.
93
See Articles 131 to 156 of the Patent Act.
94
See the Minutes of the 35th Meeting of the Patent
System Subcommittee of the Industrial Structure
Council. The "post grant review" system of which
introduction is suggested therein is a user-friendly
system like the former post-grant opposition systemcentering on examination by documentary proceeding.
95
Article 104-3, paragraph (1) of the Patent Act.
96
See the judgment of the Supreme Court, April 23, 1917,
Minroku, vol. 23, at 654.
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