18 An Empirical Study of Inventive Step in Japanese
IP High Court Cases and Reconstruction of Its Test
from a Functional View (*)
Overseas Researcher: Takeshi MAEDA
The inventive step requirement is one of the most important requirements for patentability. This study
firstly clarifies the functions of the inventive step requirement, which have not previously been fully studied inJapan, and then sets out a theoretical reorganization of the standards used in practice. According to the analysis
in this study, the inventive step requirement, which evaluates the level of technical difficulty in creating theinvention, functions as a means of sifting out inventions with low development costs but high protection costs,
thereby ensuring that only inventions requiring an incentive for their creation are protected. The standards usedin practice when judging the inventive step can be classified into two questions, which are whether it was
sufficiently plausible to attempt to create the invention from prior arts and whether there was a reasonable
expectation of success. Furthermore, this study includes a statistical analysis of recent Intellectual Property High
Court cases and its comparisons with the US. It shows that the threshold of the inventive step requirement haschanged dramatically in recent years, and that one reason for this change is that the reasoning in judging theinventive step has become more detailed than before. These changes demonstrate an interesting symmetry withrecent changes after KSR in the US.

I

Introduction

The purpose of the Patent Act is stated to be
the provision of incentives for creation via thegranting of patent rights, thereby encouraging
invention, but at the same time, the monopoly
resulting from patent rights restricts access toinventions. The trade-off between incentives andaccess can be said to be the perpetual challenge for
the Patent Act. The question of which inventions
should be granted patent rights as inventions thatsatisfy the requirements for patentability is one of
the most important issues in this area. Of these,
the inventive step requirement prescribed in
Article 29 (2) of the Patent Act is said to be themost important requirement for patentability.
Despite its importance, the inventive steprequirement has not previously been subject toadequate study. In particular, there have been very
few comprehensive, theoretical studies to date,
which would appear to be due to the fact that
judgments concerning the inventive step are highly
individual. This study emphasizes the theoreticaland comprehensive, in order to remedy thisdeficiency.
This study firstly examines the meaning andfunctions of the inventive step requirement intheoretical terms, and then collates andsystematizes the current standards and techniques
for judging the inventive step in practice based on
this premise. In addition, this study provides an
overview of evolution of case law in theIntellectual Property High Court and provides
empirical and statistical analyses of the direction ofchanges therein, as well as the reasons for suchchanges. To date, there has been little empiricalanalysis of judicial cases in Japanese jurisprudence,
so the analysis herein is one of the distinctive
features of this study. Gathering data on judicial
cases concerning the inventive step iscomparatively easy, and it would appear to be ofgreat benefit to use statistical analysis in order toensure that one does not lose sight of the overall
perspective regarding judgments on the inventive
step, given that the cases concerned are highly
individual in nature.

(*) This is an English translation of the summary of the report published under the Industrial Property Research

Promotion Project FY2013 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 Fiscal Year 2013.
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Ⅱ The meaning and Functions of
the Inventive Step Requirement

less likely it is that an invention will be created
without an inducement in the form of patent rights.

1

2

Conventional Arguments on the meaningof the Inventive Step Requirement

As to the purpose of the inventive steprequirement in Japan, commentators points outthat granting exclusive rights impedes activities by
third parties, on the grounds that incentives tocreate inventions involving no inventive step are
unnecessary1. This can be understood to mean thatno incentives to creation are needed for inventions
that do not satisfy the inventive step requirement,
and that restricting access by users via protection
has considerable adverse effects, but none of thesecomments are any more than remarks based on gut
feeling, and there has been no detailed research inthis area hitherto2.
On the other hand, there are many detailed
analyses in the USA. One study of note is provided
by Merges, who advances the theory that thenonobviousness requirement (equivalent to theinventive step in Japan) is intended to provide an
incentive to research institutes to carry out
high-risk research and development3. This theory
focuses on the standard for reasonable expectationof success4, which is used in practice in the USA,and interprets the nonobviousness requirement as
the question of the extent to which it was obvious
in advance whether or not the invention would be
successful,
as
well
as
proposingthat
nonobviousness should be affirmed when theuncertainty faced at the time of invention was suchthat there was a higher probability that theinvention would not succeed. This theory can besaid to be distinctive in that it focuses on thedecision-making
aspectofresearchanddevelopment. Another theory shows a similar
analysis, which propounds that nonobviousness
requirement functions to secure incentives to
conduct research and development with a highsocial value5.
Moreover, in Graham6, the US Supreme Court
says that nonobviousness requirement picks out“the class of those inventions which would not be
disclosed or devised but for the inducement of apatent”. This forms the cornerstone of a theory
called the inducement standard of patentability 7 ,which is based on the premise that thenonobviousness of an invention depends on thecost of invention activities and the probability ofsuccess, and propounds that the protection ofpatent rights is required because the higher thecost and the lower the probability of success, the

The Analysis of the function of theInventive Step ThereofWith reference to the foregoing, this study
defines the inventive step as to assess “ technicaldifficulty ex ante in the process of creating theinvention.” Moreover, it defines technical difficulty
as the evaluation of whether or not “it is easy todevise how to create it from prior arts, and there isa high expectation of success of it.” Technicaldifficulty serves as a proxy variable for both thescale of the anticipated cost faced before beginning
the research project that led to the invention, andthe social cost that would arise from granting
protection in the form of patent rights (therestriction of access is a typical example of this).
Thinking in these terms, the inventive steprequirement can be understood as excluding
inventions with low research and development
costs but high protection costs from the scope ofprotection, thereby achieving a balance between
incentives and access.
Consequently, the inventive step requirement
offers patent protection only to those inventions
which have at least a certain level of technicaldifficulty anticipated before creating the invention.
Assuming that an invention is something that gives
rise to some social value, it should be createdunder the protection of a patent only if theremaining value after the protection cost is
deducted from the social value exceeds theresearch and development cost.. If the protection
cost is not taken into account, there would be nodisadvantage in granting patents to any invention,
irrespective of the need for incentives for creation.
However, in reality, the protection cost is so high(which means there is a trade-off between
incentives and access) that it cannot be disregarded,
so it is necessary to create the hurdle of theinventive step and grant patents only to inventions
requiring the incentive of a patent, ensuring thataccess to inventions is not impeded. The hurdle ofthe inventive step requirement should not be sohigh as to deny protection to an invention that
requires an incentive to its creation, nor should it
be too low, taking into account the cost ofprotection.
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The Role of the Inventive Step Requirementin the Patent System and its limitations
The most important function of the inventive

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step requirement is sifting out inventions which do
not require an incentive in the form of a patent,
thereby eliminating the adverse effects ofprotecting such inventions. However, raising thehurdle of the inventive step when the adverse
effects of protection are a problem will not solve
the problem if even inventions which require an
incentive are denied protection, as it will merely
result in such inventions not being created. If theadverse effects of protection are a problem, othermeans should be employed to reduce the cost ofpatent protection 8 ; if invention has a means tosecure another incentive9, there is the option of
denying patent protection from the outset.
This is also consistent with debate in the USA.
In the USA, the excessively high cost of patent
protection in the software sector has been pointed
out as one of the structural problems in the patent
system10. Government reports have stated that the
problem lies in the fact that the nonobviousness
requirement is too lax 11 , but in a paper that
demonstrates the potential for using thenonobviousness requirement as a policy lever todeal with policy issues12, Burk and Lemley pointout that it is in fact a lack of incentives due to thenonobviousness requirement being too strict thatis the problem in the fields of biotechnology andsoftware13, noting that the causes of the problems
in the software sector include rights that are
actually too broad and a lack of clarity concerning
the scope of rights 14 . Moreover, Bessen andMeurer also stress the need to improve the clarityof the scope of patent rights (patent notice)15.
If the inventive step hurdle is too strict, it will
also sift out the inventions that do need incentives,
so it will not provide a fundamental solution to the
problem of the overly high cost of protection. In
fields where patent protection is necessary inorder to provide incentives, all that can be done isto strive to reduce the cost of protection byclarifying the scope of rights and promoting
transactions.

Ⅲ The framework and Standards ofthe Inventive Step
Based on the observations concerning
functions outlined in the previous chapters, thischapter summarizes current practice in Japan when
making judgments on the inventive step. Due tothe limitations of space, this summary
concentrates on describing the basic approach; adetailed description of judicial precedent
concerning each factor in judgments on theinventive step, approaches to allegations and

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evidence at each stage in examination, trial, andlitigation, the inventive step in relation to special
inventions, and comparisons with laws in othercountries can be found in the main text of thereport.
1

The Overall framework the Inventive Step
assessment

In current practice, the inventive steprequirement is assessed by the following steps: (1)finding of the claimed invention16; (2) finding of the(primary) cited invention; (3) finding of common
ground and differences between them; and (4)judgment on differences (judgment on ease ofarrival at the claimed invention). The judgment onease of arrival is determined by whether or not it
can be reasoned that a person skilled in the art
would have easily arrived at the claimed invention
based on the cited invention. The judgment on theinventive step is made in accordance with theaforementioned stages, based on the premise thatthe knowledge held by a person skilled in the art
includes common general knowledge 17 and citedinventions (inventions listed in each item of Article
29 (1)). It is for the foreseeability of the inventive
step judgments that common general knowledge
and cited inventions are required to be the starting
points of the judgments, though this framework
could be regarded as formalistic. . Accordingly,
stringent rules are required for findings andreasoning. For example, finding of the citedinvention requires an enabling description or
support of the invention18; this must be disclosed
in a single publication and findings may not bemade on the basis of a combination of multiple
publications19.
Deducing from the functions of the inventive
step requirement as understood in this report, anease of arrival should be judged as follows: First,
the person making the judgment set out the pathleading from the cited invention to the claimed
invention; then he should demonstrate in light ofcommon general knowledge that “it was
sufficiently plausible to attempt to follow that path”(plausibility to try) and that “that path cannot be
said to have had little prospect of success without
excessive burden” (reasonable expectation of
success). As well as having a theoretical basis, thisdefinition would seem to explain current practicein judgments on the inventive step.
2

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The Approach to Ease of Arrival
In the foregoing summary, the first element injudgments on ease of arrival is the judgment onwhether or not it can be demonstrated that it was
sufficiently plausible to attempt to follow the pathleading from the cited invention to the claimed
invention. The question of what degree ofplausibility is required to demonstrate this is alegal judgment and it is possible to use various
criteria based on the fundamental stance. For
example, suppose an invention is a means ofsolving a problem, one can consider how muchdetail should be provided regarding the inventive
path from establishing the problem to reaching themeans of solving it, in order to demonstrate theplausibility to try the invention20. If one takes the
stance that a comparatively low level of inventive
step is preferable, one should think in terms ofrequiring more detailed demonstration of theplausibility to try. A ruling of the Intellectual
Property High Court dated January 28, 2009 statedthat judgments concerning ease of arrival require“suggestion that the inventors would arrive at theinvention, rather than an inference that they could
have arrived at it”21; stressing the importance ofunderstanding the problem of the invention when
judging ease of arrival, it stated that the ease ofarrival of the claimed invention should beconsidered in the view of the composition of theclaim as a means of solving the problem22. Thisruling can be understood as having adopted thestance that a detailed demonstration is necessary.
The Examination Guidelines cite “motivation”
as a factor to demonstrate ease of arrival, which
gives as specific examples the relevancy of technicalfields, close similarity of problems to be solved,
commonality of working or functions, andsuggestions in the cited inventions23. Moreover, theExamination Guidelines state that choice of suitablematerial, mere design change,or mereaggregation are also factors in demonstrating easeof arrival24. These are also frequently used in caselaws as facts establishing ease of arrival. The factthat combined secondary cited invention is awell-known art is often used in practice as well. Allof these facts can be categorized as factors that
demonstrate that the attempt was sufficiently
plausible.
Moreover, if there is opposite facts from thefacts above, it would be a factor that denies ease ofarrival. These include lack of relevancy of technicalfields and the fact that the cited invention focuses
on a different direction from the claimed invention(teaching away). Some of the factors called“technical hindrance” in practice can be considered
as one type of this.

This report takes the view that even if theplausibility to try can be affirmed ease of arrival isdenied if this is not supported by a reasonable
expectation of success. In practice, the fact that aclaimed invention has an unexpected effect25 andthe existence of technical hindrance are used asfactors affirming the inventive step. They can beunderstood to play a part in denying ease of arrival if
there is no reasonable expectation of success. It
would appear to be necessary for the existence of an
unexpected effect to be disclosed on thespecification, but there is no need to state on thespecification itself that the effect was unexpected26.
In this study, technical hindrance is defined as afactor that gives rise to a strong expectation that
there is a technical obstacle or hindrance on thepath from the cited invention to the claimed
invention. There are a number of rulings in which
the existence of an obstructive factor has been thedecisive factor in affirming the inventive step27.

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The foregoing can be summarized in the form of the diagram below.
Demonstrating ease of arrival

It is plausible to attempt the pathto the claimed invention(“motivation”)

There is a reasonable expectation
for success in such attempt＋≒No unexpected effect orno technical hindrance≒ Matters of design, motivationin the narrow sense, etc.
3

Summary

The framework based on the perspective of
this study can provide a theoretical explanation ofmost of conventional practice. Factors used todemonstrate ease of arrival in practice include
matters of design, well-known art, relevancy oftechnical fields, commonality with the citedinventions,obviousnessoftheproblem,suggestions in the cited inventions, the fact thatthe cited inventions teach away from the claimed
invention, technical hindrance, and unexpected
effects. All of these factors can be classified andused as factors that affirm or deny either theplausibility of the path to arrive at the claimed
invention or the fact of there being a reasonable
expectation of success in the attempt. Althoughfurther details have been omitted from thissummary of the full report, this approach would
appear to be compatible with practice in Europe
and the USA.

Ⅳ

Empirical
AnalysisoftheInventive Step Case Law in Japan

The practice about the inventive step in Japanbegan to change its trends in around 2009 and it issaid to have become easier to have a patent
granted in recent years. This chapter conducts anempirical analysis of the development of case laws
concerning the inventive step.
1

it is said to have become easier to have theinventive step accepted since the ruling of theIntellectual Property High Court dated January 28,
2009, Case No. 2043 at 117 29 . This ruling,
employing the test which is some people saysimilar to the TSM test in the USA, seeks toincrease the foreseeability of judgments on theinventive step by eliminating hindsight30, and it has
been pointed out that case laws thereafter haveemphasized the problem to be solved by theinvention, requiring detailed reasoning to affirm
ease of arrival 31 . Some empirical studies havealready showed this to some extent32.
This study provides empirical evidence toprove the details, analyzing trends in trial decisions
by the Japan Patent Office (JPO) in trials against an
examiner’s decision of refusal and trials forinvalidation, and rulings by the Intellectual
Property High Court in suits against an examiner’s
decision of refusal, and suits against the trial
decision by the JPO in trials for invalidation.
Furthermore, taking judgments by the Intellectual
Property High Court in 2005 and 2012 as typicalexamples of rulings made at a time when
judgments concerning the inventive step werestrict and lax, respectively, the reasons for thechange in trends in court judgments in each year
are analyzed.
2(1) Trends in trial decisions by the JPO(2003-2012)

Background

The way to judge ease of arrival in Intellectual
Property High Court was criticized as denying theinventive step in too many cases, due to the “Same
Technical Field Theory” and hindsight28. However,

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Statistics of the Inventive Step

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First, let us look at trends in JPO trials against
an examiner’s decision of refusal and trials forinvalidation (Figures 1 and 2)33. These diagrams
show that judgments by the JPO have been moving
toward easier recognition of patents until around2012 when compared to around 2006. As the major
issues at trials are the inventive step requirements,
it can be inferred that the JPO has tendency tolower the criteria of the inventive step since200934.
(2) Trends in Intellectual Property High
Court suits against the JPO trial decision(2003, 2005-2012)(i)

Overview of trends in suits against the JPO
trial decision in the Tokyo High Court andthe Intellectual Property High Court(2003-2012)

Inter-partes
Ex-parte

hand, the revocation rate in ex-parte appeals (≒trials against an examiner’s decision of refusal) was
low in 2004-2005, but has been on the rise since2009. In order to understand the disparity in trends
between ex-parte appeals and inter-partes trials, I
will analyzes suits against the JPO trial decision inwhich the inventive step was the issue in next
section.
(ii) Detailed analysis of suits against the JPO
trial decision in trials for invalidation(2005-2012)
I surveyed the rulings published on theIntellectual Property High Court’s website inwhich the inventive step was the issue36, with theresults summarized in Table 1 and Figure 4.
2008 marked the watershed after which
dramatic changes occurred in trends in judgmentson the inventive step. Before 2008 there was asignificant disparity in terms of the proportions
revoked, between trial decisions that affirmed theinventive step and those that denied it. Among JPO
decisions regarding invalidation trials which werelater revoked by courts, the disparity between
decisions in trials for invalidation where the request
was accepted and those in which the request was
dismissed must be attributed to the disparity instances on the inventive step. Between 2005 and2007, there was a tendency for the high court todeny the inventive step, but now it would appear tobe eliminated.

Next, let us look at trends in court judgments
in suits against the JPO trial decision 35 . The
revocation rate in inter-partes trials (trials forinvalidation) has not changed a great deal
throughout the period under analysis. On the other

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Table 1 Number of Suits against the JPO Trial Decision per Year
JPO trial decision accepting therequest for invalidation

JPO trial decision dismissing therequest against an examiner’s
decision

JPO trial decision dismissing therequest for invalidation

P-value37
revokeddismissed

revokeddismissed

2005
2006

1
3

27
47

8
11

11
10

2007

10

55

15

8

revokeddismissed

0.001
0.000

5
11

79
91

0.000

17

107

2008

6

33

11

26

0.134

18

110

2009

15

36

5

21

0.335

26

60

2010

6

24

11

31

0.542

23

74

2011

6

17

13

40

0.885

20

84

2012

8

25

16

41

0.692

28

87

Figure4 Revocation Rate of the JPO trial Decisions
involving the Inventive Step
JPO Acceptance ofRequest for Trial
for Invalidation
RevokedJPO Dismissal of
Request for Trial forInvalidation
RevokedJPO Refusalof Application
Revoked(3) Summary
The tendency between 2005 and 2007 for ahigh proportion of rulings denying the inventive
step and a low proportion affirming it to be upheld
cannot be explained merely because the criteria of
the inventive step was high38. In the sense thathigh courts had a bias to deny patentability at thistime, they can be regarded as having been“anti-patent” 39 40 . Now, at least, courts havereturned to a neutral stance. Influenced by courts,
the JPO has become more relaxed about
recognizing patentability, and the courts are
ratifying its decisions.
3changes in the factors pointed out in judgments onease of arrival.2005 was selected as a typical year
during the period before the change in the overall
trend in court rulings, while 2012 was selected as a
typical year during the period after the change.
This analysis focused on rulings in suits against
the JPO trial decision made by the Intellectual
Property High Court in 2005 and 2012 (for theperiod January 1 to March 31, 2005, the analysis
focused on rulings by the Tokyo High Court)41. The
survey focused on 173 rulings from 2005 and 207
rulings from 2012.

Analysis of factors used for Reasoning
on Ease of Arrival (Comparison of 2005
and 2012)(1) Principles and methods of analysis
To identify the causes of the change injudgments on the inventive step, I analyzed
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Table 2 Rulings Subject to Survey (2005 and 2012)

Trial Decision

Dismissed
Prejudice on
the Merits(Partially)
Approved

Total

Trial Decision

Dismissed
Prejudice on
the Merits(Partially)
Approved

Total

Correction Rejected

5

0

5

Correction Rejected

1

1

2

Invalidation Rejected

11

8

19

Invalidation Rejected

41

16

57

Invalidation Accepted

27

1

28

Invalidation Accepted

25

8

33

Revoked (Objection)

30

7

37

Revoked (Objection)

-

-

-

Appeal Against
Rejection Rejected

79

5

84

Appeal Against
Rejection Rejected

87

28

115

Total

152

21

173

Total

154

53

207

These rulings were collated and compiled into
a database, classified according to the particularissue (a. Error in the finding of common groundand differences; b. Error in the judgment on
differences (b-1. Error in the finding of thesecondary cited invention; b-2. Error in the findingof facts used to establish ease of arrival (excluding
facts relating to b-3.); b-3. Error in the finding oftechnical
hindrance/unexpected
effects);c.
Procedural violation or others.), and the factors
cited in rulings involving judgments on differences(rulings in which the issue was classed as b-2 orb-3) were recorded. More specifically, a record wasmade of whether or not the reason for the ruling“cites” or “does not cite” the following factors: i.
Matters of design 42 ; ii. Well-known art 43 ; iii.
Relevancy of technical fields; iv. No relevancy oftechnical fields44; v. Commonality with the primarycited invention; vi. No commonality with theprimary cited invention 45 ; vii. Obviousness ofproblem to be solved46; viii. Commonality with thesecondary cited invention; ix. No commonality withthe secondary cited invention47; x. Suggestions in
the cited inventions; xi. No suggestions48; xii. Cited
invention teaches away49; xiii. Technical hindrance;
xiv. No technical hindrance 50 ; xv. Unexpected
effect; xvi. No unexpected effect51. As a result, 163
cases in 2005 and 203 cases in 2012 involving
judgments concerning ease of arrival wererecorded. Moreover, the number of citedinventions 52 used in the judgments was also
recorded.

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(2) Analysis of factors in judging ease of arrival
Table 3 shows the results. Figures 5-7 depict these results in the form of graphs.
Table 3 Overview of Factors Cited in Judgments on Ease of Arrival
2012
Ease of arrival

2005

Yes

No

Yes

No

Matters of design

58

3

79

1

Well-known art

75

31

85

7

Relevancy of technical fields

23

7

34

1

No relevancy of technical fields

0

9

0

1

Commonality with the primary citedinvention

22

3

11

0

No commonality with the primarycited invention

4

27

7

6

Problem is obvious

26

3

21

2

Commonality with the secondary
cited invention

33

3

28

0

No commonality with the secondary
cited invention

2

40

6

10

Suggestions in the cited inventions

49

2

27

0

No suggestions

2

41

0

9

Cited invention teaches away

1

17

6

6

Technical hindrance

0

11

0

3

No technical hindrance

35

1

41

0

Unexpected effect

0

11

0

1

No unexpected effect

66

0

83

1

Total

124

79

142

21

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Unexpected effect

Obstructive factor

Cited invention
teaches away

No implications

No commonality
with the secondary
cited invention

No commonality
with the primarycited invention

No relation oftechnical fields

Relation oftechnical fields

Matters of design

No unexpected
effect

No obstructive
factor

Implications in thecited inventions

Commonality withthe secondary citedinvention

Problem is obvious

Commonality withthe primary citedinvention

Relation oftechnical fields

Well-known art

Matters of design

Unexpected
effectObstructive
factorCited invention
teaches away

Implications

Commonality
with thesecondary citedinvention

Problem isobvious

Commonality
with theprimary citedinvention

Relation oftechnical fields

Well-known art

Matters ofdesignFactors

Factors

Factors

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The proportion citing suggestions in the citedinventions increased dramatically from around 20%
in 2005 to almost half in 2012. It can be inferredthat this stemmed from the fact that the ruling of
the Intellectual Property High Court dated January
28, 2009emphasized the importance of suggestions.
However, more than half of all judgments do notrefer to suggestions at all, so it cannot be said that

this ruling is playing a decisive role. Moreover, theproportion of rulings recognizing arguments fortechnical hindrances or unexpected effects has
increased considerably. This too is understood tobe a major factor contributing to the tendency totake a positive approach to ease of arrival.

Table 4 Proportion of Rulings in Which Ease of Arrival was Affirmed and Denied, by Factor Cited
Affirmed

2012

2005

Denied2012

2005

Matters of design

95.1%

98.8%

Well-known art

29.2%

7.6%

Well-known art

70.8%

92.4%

23.3%

2.9%

Relevancy of technicalfieldsRelevancy of technicalfields

76.7%

97.1%

100.0%

100.0%

Commonality with theprimary cited invention

No relevancy of technicalfields88.0%

100.0%

87.1%

46.2%

Problem is obvious

89.7%

91.3%

No commonality with theprimary cited invention

Commonality with thesecondary citedinvention

91.7%

100.0%

No commonality with thesecondary citedinvention

95.2%

62.5%

Suggestions in the citedinvention

96.1%

100.0%

No suggestions

95.3%

100.0%

No technical hindrance

97.2%

100.0%

Cited invention teaches
away

94.4%

50.0%

No unexpected effect100.0%

98.8%

Technical hindrance

100.0%

100.0%

Unexpected effect100.0%

100.0%

Furthermore, Table 4 shows the degree towhich each factor cited contributed to the final
judgment on ease of arrival. In 2005, well-known
art and relevancy of technical fields were strongly
linked to the conclusion, whereas in 2012, the link
got weaker. This implies that the practice that had
previously been the subject of criticism, in whichthese factors lead to an immediate conclusion ofease of arrival without taking other factors into
considerationarenolongeremployed.
Nevertheless, the fact of being a well-known art orthe existence of relevancy of technical fields still
remain key factors for affirming ease of arrival.
Ease of arrival is denied in all cases in which
there are found to be technical hindrance or
unexpected effects. This may demonstrate that themodel used in this study – that ease of arrival isdenied if there is no reasonable expectation of
success – can explain actual case laws. Moreover,
the rate of ease of arrival being denied rises if there
is recognition of the factors no commonality withthe primary cited invention, no commonality withthe secondary cited invention, and cited invention

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more likely that ease of arrival will be denied even
if there are only a few factors inconsistent withease of arrival. In 2012, it can be seen that the
party seeking to demonstrate ease of arrival has aburden of explaining their reasoning in more detail.

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Table 5 Proportion of Rulings Citing Conflicting Elements*Excluding well-known art

2012

2005

p-value

Easily arrived at

0.073(9/124)

0.141(20/142)

0.075

Not easily arrived at

0.544(43/79)(0.241(19/79)*)

0.429(9/21)(0.190(4/21)*)0.345(0.628)

Table 5 shows that whereas few rulings
affirming ease of arrival cite factors oriented
toward denial of ease of arrival, rulings denying
ease of arrival tend to refer to factors affirming it
more frequently 53 . Furthermore, in judgments
affirming ease of arrival, there is a statisticallysignificant decline in the proportion citing factors
oriented toward denial in the figures for 2012. Thisimplies that in 2012, the principle that the burden
to prove ease of arrival lies with the party claiming
it was being put into effect, and that there was astronger tendency for ease of arrival to be affirmed
only in cases in which more persuasive reasoning
could be established.
(3) Analysis of Intellectual Property High
Court rulings in 2012: Analysis of theeffects of each factor on the conclusionthat the invention was easily arrived at(i)

Principles and methods of regression
analysis
The foregoing analysis shows that judgments
on ease of arrival in 2012 gave more detailed
consideration to each factor than they did in 2005.
Accordingly, a more detailed analysis of 2012
rulings will now be conducted using multiple linear
regression analysis, taking into account studies byBeebe focused on case laws concerning copyright
law and trademark law54.
In this analysis, the explained variable iswhether or not ease of arrival was affirmed(affirmed=1, denied=0). The explanatory variables
are the various factor dummies in the judgments
on ease of arrival (however, those concerningtechnical hindrances and unexpected effects are
excluded). If the factor was found, it was assigned
the value 1, and if not, it was assigned the value 0.
Moreover, a model that includes the number ofcited inventions and the selection invention
dummy (selection invention=1, not a selection
invention=0) was also formulated. Analysis was
carried out using the probit model with a robust
standard error.

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(ii) Results and discussions
Table 6 Regression Analysis of Judgments on Ease of Arrival as a Function of Each Factor (2012)
(1)
(2)
(3)
Number of cited inventions

0.4915Matters of design

2.707***

2.952***

2.647***

Well-known art

1.776***

2.024***

2.087***

Relevancy of technical fields

0.79380.8241

1.055

No relevancy of technical fields*

0

0

0

Commonality with the primary cited invention

0.84430.85101.111

No commonality with the primary cited invention-2.578***-2.463***-2.863***

Problem is obvious

2.129***

2.143***

2.528***

Commonality with the secondary cited invention

2.350***

2.241***

2.651***

No commonality with the secondary cited invention-2.755***-2.757***-2.676***

Suggestions in the cited invention

2.093*

2.006*

2.355*

No suggestions-3.754***-3.681***-4.033***

Suggestion of teaching away / beyond expectations-2.938***-3.036***-2.850***

Selection invention

2.868***

Constant term

-0.4822-1.330-0.8475

Number of observations

191

191

191

Pseudo R2

0.86990.86990.8795Log likelihood-16.554-16.174-15.038

Correctly classified

96.34%

96.34%

96.86%

Significance level: * 10%, ** 5%, *** 1%(2) With number of cited inventions (3) With selection invention dummy

The results of the analysis are shown in Table
6. These results sustain the model that ease ofarrival is judged as a function of all factors.
According to the results of this analysis, relevancy
of technical fields and commonality between the
primary cited invention and the claimed invention
make no significant contribution to affirmation ofease of arrival. The practice in which ease ofarrival is affirmed immediately if identity oftechnical fields is confirmed is no longer carriedout. Suggestions in the cited inventions do make asignificant contribution as a factor in theaffirmation of ease of arrival, but this factor hardly
plays a predominant role over the other factors. It
is certainly the case that the presence or absenceof suggestions in the cited inventions plays animportant role, but this actually tends to work insuch a way that ease of arrival is denied if there are
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regarded sensitively in judgments on ease ofarrival, as factors denying ease of arrival.
4

Discussions(1) Changes in judgments by the Intellectual
Property High Court
The following circumstances would appear tobe the reason of the shift between 2005 and 2012
toward a more positive stance on the part of theHigh Court in regard to the inventive step.
This study understands that judgments onease of arrival depends on whether it can bedemonstrated that it was plausible to try basedon all existing factors, and whether there was no
reasonable expectation of success due to the● 13 ●
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existence of an unexpected effect or a technicalhindrance. Taking this framework as the premise,the increased tendency for ease of arrival to bedenied can be explained by two factors. The first isthat the existence of technical hindrances or an
unexpected effect has become significantly more
likely to be recognized. The second is that there
seems to be a growing tendency to affirm ease ofarrival only when persuasive reasoning in the
judgment is established after having taken all of
the factors into close consideration.
This means that the Intellectual Property
High Court has revised its previous anti-patentbias and has shifted to a stance of thoroughly
verifying its reasoning and scrutinizing thearguments of the parties. Moreover, since 2009,
the JPO has lowered the criteria of the inventive
step and the courts are ratifying these moves.
(2) Comparison with changes in judgments
on nonobviousness in the USA
Let us compare the foregoing observations
with trends in the USA.
In the USA, it was said to be a problem that
nonobviousness is too easily found because of
the TSM test established by the Court of Appeals
for the Federal Circuit (CAFC)55. The TSM test wasrevised in the KSR decision 56 by the Supreme
Court in 2007, and it is believed that the tendency ofnonobviousness rulings changed thereafter.
Nevertheless, in reality, the TSM test was not
rigidly applied in judicial precedent prior to the KSR
decision. Empirical studies by Cotropia 57 and byPetherbridge and Wagner58 suggested that the TSM
test actually had a positive effect on the stability of
judgments. However, one empirical study thatexamined CAFC decisions after the KSR decision59
shows that it has clearly become more difficult tohave nonobviousness recognized although it is not
the case that the TSM test ceased to be used after
the KSR decision. Another empirical study also
corroborates this point60. There is no doubt that the
KSR decision raised the standard for patentability.
How does this change in the USA comparewith changes in Japan’s Intellectual Property High
Court? In conclusion, the judgment frameworks
currently used in Japan and the USA can be said to
be closer to each other than they were previously.
A bias could formerly be seen in the rulings ofJapan’s Intellectual Property High Court, in thattrial decisions affirming the inventive step in JPO
were t upheld in IP high court at extremely low
rate, while decisions denying it were upheld atextremely high rate; however, this bias is now
being eliminated, with the former rising and thelatter falling. On the other hand, in the case of
CAFC, while no major disparity in the proportionof lower court decisions upheld was seen before
the KSR decision61, it was observed thereafter thatthe proportion of rulings denying nonobviousness
that were upheld rose substantially, while theproportion affirming it that were upheld remained
unchanged 62 . Whereas the phenomenon seen
previously in Japan cannot be explained without
the existence of an inconsistent bias, thephenomenon in the USA can be explained as
something observed immediately after the criteriaof the nonobviousness was raised 63 . For thepresent, at least, there is no bias in judgments ineither Japan or the USA.
The empirical studies above suggest that even
before the KSR decision when the TSM test was
sometimes considered absolute, there was still atendency for the TSM test to be applied flexibly.
Now that the KSR decision has warned against therigid application of the TSM test, it seems that the
USA is in transition toward placing greater
emphasis on the flexibility of judgments, as
although it has not completely abandoned the TSM
test, which is a clear standard. I previously pointed
out that Japan is shifting toward requiring moredetailed reasoning, while maintaining the flexible
framework for judgments employed hitherto,
attaching importance to suggestions in the citedinventions, without rigidly applying this criterion.
While employing in some cases the high standard
for predictability that was used in the USA, Japan ismaintaining the good parts of its conventional
flexibility in judgments on ease of arrival(obviousness). In this sense, Japan and the USA
share greater commonality in terms of the fact thatthey are both endeavoring to achieve a balance
between clear standards and flexible judgments.

Ⅴ Conclusion
The function of the inventive steprequirement is to exclude from the scope of patent
protection inventions whose creation cost is sosmall that they would be created even without
patent protection, and inventions whose protection
cost is too high, by measuring the technicaldifficulty ex ante in the process of creating theinvention. The ramification from this approach isthat the standards for the inventive steprequirement should be sufficiently lax to protect all
inventions that lack an incentive for their creation.
The standards for judgments on the inventive
step in current practice can be reorganized on thebasis of this understanding. The two issues are the● 14 ●
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One is whether it was plausible to try the path thatled from the cited invention to the claimed
invention, and the other is whether there was areasonable expectation of success in this attempt.
The factors involved in such judgments can besummarized as follows: the existence or otherwiseof suggestions in the cited invention and relevancy
of technical fields are used as factors for judging
the former, while the existence or otherwise oftechnical hindrance and unexpected effects areused as factors for judging the latter.
Moreover, an empirical analysis of trends inrecent judicial precedents and the factors thereinhas been carried out based on this framework.
Previously, decisions in the Intellectual Property
High Court were negative to affirming theinventive step, but this tendency has now
disappeared. The primary reason for this is thegrowing tendency to verify ease of arrival on thebasis of detailed content of the inventions. Caselaws on nonobviousness have been evolving in the
USA as well in recent years, and the changes thathave taken place in opposite directions in Japan andthe USA can be regarded as having resulted inincreased commonality between them.
1

Nobuhiro Nakayama, The Patent Act (2nd Edition) (2011)at 134 (in Japanese). Nakayama points out that one can
expect inventions involving no inventive step to becreated, even if no incentive for their creation is given.
Also, Japan Patent Office (ed.), Point-by-Point
Explanation of Industrial Property Law (18th Edition)(2010) at 90; and Yoshiaki Aita, The Inventive Step inInventions, in Minoru Takeda (Editor-in-Chief), Legal
Principles and Issues in Patent Examinations and Appeal
Trials (Japan Institute of Invention and Innovation, 2002)at 217-218 (both in Japanese). Kazuhiko Takeda, Patent
Knowledge 8th Edition (Diamond, 2006) at 3 (inJapanese) and others point out that protecting inventions
involving no inventive step could have an adverse effecton society.
2
Yoshiyuki Tamura, ‘Muddling Through’ of Patent System
towards Innovation (2), Intellectual Property Law and
Policy Journal Vol.36 at 153 (in Japanese) presents theview that the inventive step requirement can be used as apatent policy lever. More specifically, he introduces Burkand Lemley’s “Policy Levers Theory” (see Dan L. Burk
& Mark A. Lemley, Policy Levers in Patent Law, 89
Virginia Law Review 1575 (2003)) and points out that the
non-obviousness requirement can be used as a policy
adjustment tool (ibid. at 172).
3
Robert P. Merges, Uncertainty and the Standard ofPatentability, 7 High Tech. L. J. 1 (1993).
4
The idea that obviousness should be affirmed when there
is an incentive to modify and combine prior art and there
is a reasonable expectation of success (Manual of Patent
Examining Procedure (Rev.9 August 2012) (hereinafterreferred to as MPEP) §2143.02). In re O’Farrell, 853 F.2d

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Vol.23894 (Fed. Cir. 1988) states that a reasonable expectationof success is required for an invention to be obvious. (SeeAnna C. Chau and Irving N. Feit, The Obvious to Try
Doctrine: Its Use, Misuse, and Abuse, 91 J. Pat. &Trademark Off. Soc’y 89 (2009) at 92.) There are those of
the opinion that this standard played a decisive role inmany lower court decisions in the immediate aftermath of
the KSR decision (Stephen G. Kunin & Andrew K.
Beverina, KSR’s Effect on Patent Law, Mich. L. Rev. First
Impressions (2007)).
5
Michael J Meurer and Katherine J. Strandburg, Patent
Carrots and Sticks: A Model of Nonobviousness, 12
Lewis & Clark L. Rev. 547 (2008).
6
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459(1966).
7
Michael Abramowicz and John F. Duffy, The Inducement
Standard of Patentability, 120 Yale L.J. 1590 (2011).
8
There are various measures, for example, reducing thescope of rights so that the need for a transaction does notarise (making the disclosure requirements stricter
reduces the scope of protection. The relationshipbetween disclosure requirements and the scope ofprotection is examined comprehensively in Takeshi
Maeda, The Role of Disclosure by Means of theSpecification in the Patent Act (2012) (in Japanese)),clarifying rights (clarifying for the method for the claim
interpretation, etc.), and facilitating patent rights
transactions (promoting patent pools, legislation
concerning licenses, etc.)
9Even without patent rights, it is possible to make a
substantial profit due to such factors as first-moveradvantage, trade secrets, the time for others to copy, andthe use of brands. Yoshiyuki Tamura, ‘Muddling Through’of Patent System Towards Innovation (1), Intellectual
Property Law and Policy Journal Vol.35 at 27 (inJapanese) cites from 31 onwards such surveys as the Yale
Survey, the Carnegie Mellon Survey, and the NISTEPSurvey, pointing out that these demonstrate thatmechanisms other than the patent system play arelatively important role in securing incentives (ibid. at
50).
10Bessen & Meurer, Patent Failure: How Judges,
Bureaucrats and Lawyers Put Innovators at Risk
(Princeton University Press, 2008) at 106-109, 138-142,
187-194, and Dan L. Burk and Mark A. Lemley, The
Patent Crisis and How the Courts Can Solve It (The
University of Chicago Press, 2009), point out that thesoftware and IT industry faces a problem in that the costof patent protection is too high.
11
To address the problem that too many patent rights giverise to adverse effects on licenses and the like, tworeports by government institutions – Federal Trade
Commission, To Promote Innovation: The Proper
Balance of Competition and Patent Law and Policy(October 2003), and National Academy of Science, A
Patent System for the 21st Century (2004) – haverecommended controlling the “quality” of patents, by
raising the standard of the non-obviousness requirement.
Moreover, the issue of the quality of patents was being
discussed not only from the issue of the standards set bycourts, but also in the form of doubts concerning theexamination capabilities of the Patent Office (see Bessen
and Meurer supra note 10 at 160-161. However, they areskeptical about such discussions.)● 15 ●
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12

See Burk and Lemley supra note 10 at 114-116 andsupra note 2.
13
Regarding biotechnology, Burk and Lemley supra note
10 at 150 advocate the need to encourage investment by
reducing the standards of nonobviousness, and conclude
that the tragedy of the anticommons (Michael A. Heller
and Rebecca S. Eisenberg, Can Patents Deter
Innovation? The Anticommons in Biomedical Research,
Science 280 (5364): 698–701 (1998)) is caused by too
narrow a scope of rights. Regarding software patents on
the other hand, based on the theory of cumulative
innovation (Robert P. Merges and Richard R. Nelson, On
the Complex Economics of Patent Scope, 90 Colum. L.
Rev. 839 (1990). This is the theory that, as cumulative
progress is made in inventions, the scope of protection
should be restricted from the perspective of transaction
costs, while granting sufficient protection to secure
incentives), they state that the nonobviousness
requirement should be reduced in order to protect
software inventions, which are gradually evolving (ibid.
at 159).
14
Burk and Lemley supra note 10 at 158-160.
15
In the opinion of Bessen and Meurer supra note 10, theproblems in the current patent system were brought
about by the decline in patent notice that occurred fromthe mid-1990s, specifically changes in the method ofclaim construction, overly broad rights in software andbiotechnology inventions, and the continuing increase in
the number of patents that began in the 1980s. Moreover,regarding software patents, see Mark A. Lemley,
Software Patents and the Return of Functional Claiming,
Stanford Public Law Working Paper, No. 2117302 (2012)(proposing the definiteness of the scope of rights basedon the interpretation of functional claims.) The 2011
report by the FTC (2011 FTC Report: The Evolving IP
Marketplace: Aligning Patent Notice and Remedies with
Aligning Patent Notice and Remedies with Competition)
also suggests that there is a need to strengthen patent
notice.
16
Also called “finding of the gist of the invention,” this iscarried out on the basis of the claim language; if there
are special circumstances, the statements in the detailed
description of the invention in the specification are to beconsidered (ruling of the Supreme Court on March 8,
1991, Minshu Vol.45, No.3 at 123).
17
In practice, both the terms “well-known arts” and“commonly used arts” are used. Well-known arts isthe term used to refer to those inventions listed in each
item of Article 29 (1) that are widely known to a person
skilled in the art (to put it another way, inventions thatare listed in each item of Article 29 (1) and are common
general knowledge), so commonly used arts can beunderstood to be a type of well-known art. Examination
Guidelines, Part II, Chapter 2, 1.2 (3); Report on theInventive Step Review Conference 2007, at 131 and 147.
18
the Intellectual Property High Court on August 19, 2010,
Case No. 2009 (Gyo-Ke) 10180.
19
Examination Guidelines, Part II, Chapter 2, 1.5.4 (4); theIntellectual Property High Court on September 26, 2007,
Case No. 2006 (Gyo-Ke) 10174; the Intellectual
Property High Court on May 12, 2010, Case No. 2095 at
108.
20
The Intellectual Property High Court on January 31,
2011, Case No. 2010 (Gyo-Ke) 10075 states that “Whenmaking judgments on ease of arrival, it is necessary andessential to accurately identify the problem to be solved(action/effect, etc.) that was the purpose of the invention
in question, and then to make a comprehensive
judgment concerning ‘whether it was easy to establish
the problem to be solved’ and ‘whether it was easy toadopt the specific composition to solve that problem’ inrelation to this.” (For a commentary on this, see Naoki
Koizumi, Finding of Problems to be Solved in Judgmentson the Inventive Step, Jurist No.1431 at 106 (2011) (inJapanese).)21
The Intellectual Property High Court on January 28,
2009 Case No. 2043 at 117 states that “In order to judge
that the invention in question is easily arrived at, when
considering the nature of the prior art, it is not sufficient
merely to support the inference that the inventor could
have made an attempt that enabled him/her to arrive at
the features of the invention in question; it stands toreason that an suggestion should be required that theinventor should have done so in order to arrive at thefeatures of the invention in question.”22
The Intellectual Property High Court on January 28,
2009 Case No. 2043 at 117 and the Intellectual
Property High Court on September 28, 2010 Case No.
2097 at 125 state, “The question of whether or not a
person skilled in the art was able to easily arrive at theinvention claimed in the application based on prior art
shall be judged on the basis of whether or not it waseasy to arrive at the features (composition that differsfrom the prior art) of the invention claimed in theapplication in regard to prior art, taking that prior art as
the point of departure. However, as the features(composition that differs from the prior art) of theinvention claimed in the application are intended tosolve the problem that was the purpose of the invention
in question, in order to make an objective judgment onwhether or not there was ease of arrival, it is essential
to accurately identify the features of the invention inquestion; in other words, it is essential to accurately
identify the problem that was the purpose of theinvention in question.” (underlining by author).
23
Examination Guidelines for Patents and Utility Models,Part II, Chapter 2, 2.5 (2).
24
Examination Guidelines for Patents and Utility Models,Part II, Chapter 2, 2.5 (1). These are positioned in the
Examination Guidelines as specific examples of“demonstration”, and are treated differently frommotivation.
25
Examination Guidelines for Patents and Utility Models,Part II, Chapter 2, 2.5 (3) I. The Examination Guidelines
state that if the effect is “distinctively beyond the
expectation” – in other words, if it has a different effectfrom the cited invention or has the same effect but ismarkedly better, and these facts cannot be expectedfrom the state of the art – the inventive step shall beaffirmed, even if other elements have demonstrated that
it was easily arrived at.
26
The Intellectual Property High Court on July 15, 2010,
Case No. 2099 at 124 accepted as evidence certificatesof experimental results compiled after application when
judging effects in the inventive step judgment. While
accepting the principle that the existence of the effectmust be disclosed on the specification, this decisionconsiders experimental results supplied after the● 16 ●
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application, as long as these do not go beyond thedescriptions in the specification. The reason given forthis is the fact that it is not possible to predict
beforehand the type of allegations that will be madeagainst the application. The Examination Guidelines,
Part II, Chapter 2, 2.5 (3) II also state that effects
claimed or proven in written opinions, etc. may beconsidered when they can be presumed from thespecification. The Report on the Inventive Step Review
Conference at 131 states that requesting advantageous
effects from the outset is unfair to the applicant and thatsuch written opinions are permitted to the extent thatthey are used to provide greater clarity regarding theeffects that a person skilled in the art could presume
from the specification, etc.
27
Rulings including Intellectual Property High Court on
October 28, 2009, Case No. 2008 (Gyo-Ke) 10377;
Intellectual Property High Court on July 19, 2011, CaseNo. 2010 (Gyo-Ke) 10357; Intellectual Property High
Court on September 28, 2011, Case No. 2011 (Gyo-Ke)
10056; and Intellectual Property High Court on
September 12, 2007, Case No. 2007 (Gyo-Ke) 10007.
28
According to Tomokatsu Tsukahara, Are These the
Dying Days of the Same Technical Field Theory?
Considering New Developments in Judgments on theInventive Step in Patents, Patent Studies No.51 at 2(2011) (in Japanese), it previously used to be a
predominant approach that ease of arrival shall be foundjust if the identity of the technical fields were found,.
Moreover, Eiji Katayama, Comments from Practitioners
Concerning the Intellectual Property High Court, Jurist
No.1326 at 20 (2007) (in Japanese) states that in recent
years, the Intellectual Property High Court has been
criticized for its practice of denying the inventive step incases in which two technologies belonging to the same
technical field are combined, deeming that there is easeof arrival at the combination, unless it is proven that
there are technical hindrance.
29
Yoshiyuki Tamura points out that it was the 2009decision that triggered changing trends in Intellectual
Property High Court judgments (Yoshiyuki Tamura,
Challenges Facing the Third Division of the Intellectual
Property High Court: Preventing Hindsight in
Judgments on the Inventive Step Requirement (Westlaw
Japan,
column
dated
March
7,
2011,
http://www.westlawjapan.com/column/2011/110307/ (inJapanese)); Tsukahara supra note 28); Masato Tanaka
and Hiromi Furukawa, Characteristics of Trends in
Recent Judgments by the Intellectual Property High
Court Concerning the Inventive Step in Inventions,
Chizaiken Forum Vol.86 at 56 (2010) (in Japanese) also
demonstrates a similar awareness.
30
Seiji Ohno, Criteria for Judging the Inventive Step – The
Circuit Connecting Component Case, Nobuhiro
Nakayama et al. (eds.), The Top 100 Patent Rulings [4thEdition], at 34 (2012) (in Japanese). Moreover, Iimura,
who was the presiding judge in the 2009 decision,compares Japan’s flexible approach to the inventive stepwith the TSM test and points out that the TSM test iseffective in eliminating hindsight, as it functions as arequirement (an element without which the inventive
step cannot be denied). (See Toshiaki Iimura, Judging
the Inventive Step in Patent Litigation, Daini Tokyo Bar
Association Study Group of Intellectual Properties (ed.),

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A Comparison of Patent Law in Japan and the USA (2009,
Shojihomu) at 195 (in Japanese).)31
Tsukahara supra note 28 points out that the Same
Technical Field Theory was once predominantly used inpractice in Japan, but that denial of the inventive step
solely on grounds based on the Same Technical Field
Theory has declined considerably over the last two or
three years, and a renewed awareness of the importanceof recognizing the problem is among the reforms that are
occurring.
32
Shin Tokii, The Current Status of Judgments on theInventive Step and the Potential for Their Application(1), Intellectual Property Law and Policy Journal Vol.41
at 125 (2012), and The Current Status of Judgments on
the Inventive Step and the Potential for Their
Application (2), Intellectual Property Law and Policy
Journal Vol.42 at 172 (2013) (both in Japanese). Tohru
Kobayashi, Yushi Segawa, Toshiya Watanabe, et al.,Changes in the Proportion of Trial Decisions Upheld in
Rulings on Suits Against the JPO Trial Decision in Trials
for Invalidation and the Background to This: An Analysisof Rulings between FY2006 and FY2008 on Suits Against
the Trial Decision Concerning Patent Rights and Utility
Model Rights, PARI Working Paper Series No.1 (2009)(in Japanese).
33
All data gathered from the Japan Patent Office Annual
Report(http://www.jpo.go.jp/shiryou/toukei/nenpou_toukei_list.
htm). These data are all totals for each calendar year
(January 1 – December 31).
34
Assuming that there is no bias throughout the period
under analysis in relation to which inventions are thesubject of a trial against an examiner’s decision ofrefusal or a trial for invalidation, the rates above
represents the criteria of the inventive step. If one
assumes that the lowering of the inventive step criteria
results in proceedings for trials against an examiner’s
decision of refusal that petitioners would normally nothave taken the trouble to initiate, and in petitioners
giving up on trials for invalidation that they would
normally have been expected to proceed with, thechange of the rates above should be canceled out.
However, the fact that there continue to be changes inthese rates means that either such behavior does notoccur or there is a pronounced tendency toward changethat exceeds the effects of such behavior. In addition, atleast in the case of trials against an examiner’s decisionof refusal, such changes in behavior appear to have noeffect, with the number of proceedings being initiatedrising from 22,000 cases in 2005 to a peak of 30,000 inaround 2007-2008, and then holding steady at around
25,000 thereafter. On the other hand, trials forinvalidation peaked at 358 in 2004 and havesubsequently been on the decline, albeit only slightly,
falling to 269 cases in 2011 and 217 in 2012; there aremany conceivable factors behind this decline, so one
cannot tell whether a change in behavior affected thistrend.
35
Data obtained from the Japan Patent Office Annual
Report (supra note 33). Ex-parte refers to trials against
an examiner’s decision of refusal and trials for correction,
while inter-partes refers to trials for invalidation.
36
http://www.ip.courts.go.jp/search/jihp0010? The Intellectual
Property High Court’s “searchable database of judicial● 17 ●
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precedents contains almost all decisions (in infringement
lawsuits and suits against the JPO trial decision) made since
the Intellectual Property High Court was established on
April 1, 2005.” For the period January 1 to March 31, 2005,
the analysis also focused on decisions that could be obtained
from the court website. In this survey, the search conditions
were set to search for decisions made between January 1 andDecember 31 each year, in which the types of rights
concerned were patent rights and utility model rights,
the types of cases were suits against trial decisions(refusal),
suits
againsttrial
decisions(invalidation/accepted), and suits against trial decisions(invalidation/rejected), and the rulings contained the
keyword “inventive step”. The results were thencollated, with those that were not classed as “dismissal
with prejudice on the merits” being regarded as a
judgment of revocation.
37
The chi-square test was used to verify whether there
was a statistically significant difference between trial
decisions in which the invalidation was accepted andtrial decisions in which the invalidation was rejected, in
terms of whether or not dismissal with prejudice on the
merits was approved in suits for revocation.
38
This is because of the following reasoning. Assumingthat the inventive step criteria will not change unless thecourts take the lead, then in a stable situation, it isassumed that trial decisions will be revocated only ifthere has been an error which occurs in fixed rate injudgment. In this situation, it is likely that the proportionof decisions upheld will not differ between lower court
judgments affirming the inventive step and thosedenying it, no matter how harsh an approach is taken to
the inventive step. Moreover, if the courts raise thestandard after the JPO has been judging the inventive
step on the basis of a low standard for a long time, it islikely that the increased standard will reduce thenecessity of revocationg decisions denying the inventive
step and the proportion of decisions upheld will rise, but
assuming that the error rate in lower courts does notchange, there should be no change in the proportion ofrulings upheld in regard to decisions affirming theinventive step. If the criteria is lowered, one shouldobserve the converse phenomenon. The imbalance inthe proportion upheld hitherto cannot be explained byeither of these, so one can only conclude that either the
JPO tended to be inconsistent in affirming patentability,or the courts tended to be inconsistent in denying it.
39Here, the term “anti-patent” is used in the sense of “atendency to try to deny patentability without consistentcriteria, which goes beyond merely having a highstandard to patentability. The same applies to the term“pro-patent”.
40
As stated in supra note 38, one strong possibility is thatthe high courts are merely in the position of rectifying
the trial decisions of the JPO, so it is actually possible tointerpret this as the courts having done no more than
rectify errors made by the JPO, which was
systematically and disproportionately pro-patent at thattime. However, in light of the relationship between the
JPO and the courts in Japan, it seems natural to take theview espoused in this paper.
41
Of the decisions published on the court website, thesurvey focused on those that were shown in the resultsof a search using the keyword “inventive step”. All ofthese were read and those in which no judgment was
actually made on the inventive step were excluded.
42
If the reason for the decision stated that there was no
particular technical significance in the differences
between the claimed invention and the cited invention,or that they were design-related matters that the party
could shape as they wished, the decision was classed as
citing this element; if it did not, it was classed as not
citing it.
43
If, in the reason for the decision, it was found that thetechnical matters applied to or combined with the citedinvention in order to arrive at the claimed invention
were already well known in the technical field inquestion, the decision was classed as citing the fact that
it was a well-known art; if not, it was classed as not
citing it.
44
If, in the reason for the decision, it was found that thecited invention and secondary cited invention belonged
to the same technical field or a closely related one, orthat the cited invention and the claimed invention
belonged to the same technical field or a closely related
one, the decision was classed as citing relevancy oftechnical fields; if a party’s assertion to this effect was
rejected or the matter was not discussed, it was classed
as not citing it. Moreover, if, in the reason for thedecision, it was actively found that the cited invention
and secondary cited invention belonged to different
technical fields, or that the cited invention and theclaimed invention belonged to different technical fields,
the decision was classed as citing no relevancy oftechnical fields; if a party’s assertion to this effect was
clearly rejected or the matter was not discussed, it wasclassed as not citing it.
45
If, in the reason for the decision, it was found that theclaimed invention and primary cited invention had
commonality in their technical concepts, or that there
were facts indicating commonality in the problem,
purpose, action, or function, the decision was classed as
citing commonality with the primary cited invention; if aparty’s assertion to this effect was rejected or the matter
was not discussed, it was classed as not citing it.
Moreover, if, in the reason for the decision, it was foundthat the claimed invention and primary cited invention
had different technical concepts, or that there were facts
indicating a different problem, purpose, action, or
function, the decision was classed as citing nocommonality with the primary cited invention; if aparty’s assertion to this effect was rejected or the matter
was not discussed, it was classed as not citing it.
46
If, in the reason for the decision, it was found that the
problem addressed by the claimed invention was obvious
to a person skilled in the art, or that there were facts
indicating that it was a general problem well known to aperson skilled in the art, the decision was classed as
citing obviousness of the problem; if not, it was classed
as not citing it.
47
If, in the reason for the decision, it was found that thesecondary cited invention and primary cited invention or
claimed invention had commonality in their technicalconcepts, or that there were facts indicating
commonality in the problem, purpose, action, or function,
the decision was classed as citing commonality with thesecondary cited invention; if a party’s assertion to thiseffect was rejected or the matter was not discussed, it● 18 ●
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for the decision, it was found that the secondary citedinvention and the claimed invention or primary citedinvention had different technical concepts or technicalcontent, or that there were facts indicating a different
problem, purpose, action, or function, the decision wasclassed as citing no commonality with the secondary
cited invention; if a party’s assertion to this effect was
rejected or the matter was not discussed, it was classed
as not citing it.
48
If, in the reason for the decision, it was found that thecited invention contained facts indicating the existenceof suggestions that should allow the claimed invention to
be arrive at, such as cases in which the cited invention
suggested the existence of the problem addressed by theclaimed invention, or in which suggestions of a specificmeans of improvement could be identified in the citedinvention, the decision was classed as citing suggestionsin the cited inventions; if the existence of suchsuggestions was clearly denied, it was classed as citing
no suggestions; and if neither matter was touched uponat all, it was classed as not citing it.
49
If, in the reason for the decision, it was found that there
were facts indicating that not only were there nosuggestions, but also that the cited invention actually
pointed in a different direction from the claimed
invention, such as cases in which the content of the citedinvention was such that the path leading to the claimed
invention was far beyond the expectation, or implied a
different path, the decision was classified as citing thefact that the cited invention teaches away; if not, it wasclassed as not citing it.
50
If, in the reason for the decision, it was found that there
was a strong expectation of a technical obstacle on thepath from the disclosed cited invention to the claimed
invention, it was classed as citing the existence of antechnical hindrance. If the decision itself used the term
“technical hindrance,” but it could clearly be understoodto have cited teaching away from the cited invention, thedecision was classified into the teaching away category,but if both could be understood from the decision, thewording of the decision was respected and it was classed
as citing technical hindrances. If the decision clearly
denied the existence of an technical hindrance, it wasclassed as citing no technical hindrance, and if neither
matter was touched upon at all, it was classed as not
citing it.
51
If, in the reason for the decision, it was found that theclaimed invention contained a distinctive effect that
could not be expected from the cited invention, thedecision was classed as citing an unexpected effect; if
the existence of such an effect was clearly denied, it wasclassed as citing no unexpected effect; and if neither
matter was touched upon at all, it was classed as not
citing it.
52
The primary cited invention and number of secondary
cited inventions that are not well-known art. If only the
primary cited invention and well-known art are cited,
this figure is 1.
53
The proportion of decisions affirming ease of arrival thatcited elements negating the affirmation of ease of arrival(no relevancy of technical fields, no commonality with theprimary cited invention, no commonality with thesecondary cited invention, no suggestions, cited invention

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ease of arrival that cited elements supporting its
affirmation (matters of design, well-known art, relevancy
of technical fields, commonality with the primary citedinvention, problem is obvious, commonality with thesecondary cited invention, suggestions in the citedinventions, no technical hindrance, no unexpected effect)
were compiled. Furthermore, the chi-square test wasused to verify whether there is a statistically significant
difference between the two proportions. As shown in thetable, in judgments affirming ease of arrival, there is astatistically significant difference between 2012 and 2005
at the 10% level, but there is not a significant difference
between them in judgments denying it. Stata IC 13.0 wasused to compile the data and apply the chi-square test.
Figures in brackets indicate cases in which well-known art
was excluded as a positive element.
54
Barton Beebe, An Empirical Study of U.S. Copyright Fair
Use Opinions, 1978–2005, 156 University ofPennsylvania Law Review 549 (2008) and Barton Beebe,
An Empirical Study of the Multifactor Tests for
Trademark Infringement, 94 California Law Review 1581
(2006). (Hereinafter cited as Beebe (2008) and Beebe(2006), respectively.)
55
Federal Trade Commission, supra note 11.
56
KSR International Co. v. Teleflex Inc. 550 U.S. 398(2007).
57
Christopher A. Cotropia, Nonobviousness and theFederal Circuit: An Empirical Analysis of Recent Case
Law, 82 Notre Dame L. Rev. 911(2006-2007).
58
Lee Petherbridge and R. Polk Wagner, The Federal
Circuit and Patentability: An Empirical Assessment of
the Law of Obviousness, 85 Tex. L. Rev. 2051 (2007).
59
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(2010-2011).
60
Jason Rantanen, The Federal Circuit’s New Obviousness
Jurisprudence: An Empirical Study, available at
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2210049.
61
Petherbridge and Wagner, supra note 58.
62
Nock and Gadde, supra note 59 at 398. The affirmance
rate of obviousness in infringement suits on appeal
rose from 40.4% before KSR to 78.9% after, whereas theaffirmance rate of nonobviousness on appeal declined
slightly, from 56.1% to 52.5%.
63
See the explanation in supra note 38. While CAFC
undeniably raised the nonobviousness standard, it is not
the case that it is biased in favor of affirming
obviousness.

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