Overview of Intellectual Property High Court, 2019 (Administrative Case) No. 10043

Case Overview

Case: Intellectual Property High Court, Heisei 31 (Gyo-Ke) No. 10043
Parties Involved:

　Plaintiff/Patent Holder: Not specified
Defendants: Not specified

Key Issue: Whether the claimed invention involves an inventive step in view of the combination of a primary prior art reference and a secondary reference

Summarization of the case

The case concerns a patent whose claimed invention relates to the design of a tire. The Patent Office initially rejected the invention on the grounds that a secondary reference could be combined with the primary reference to negate inventive step. The secondary reference, however, did not suggest enhancing the contrast of the display marks on the tire. The Patent Office reasoned that the disclosure in the secondary reference could be applied to improve the overall appearance of the tire as described in the primary reference, thereby providing sufficient motivation to combine the teachings.

The Intellectual Property High Court overturned the Patent Office’s decision, finding that, although the secondary reference aimed to enhance the tire’s appearance, it did not specifically suggest improving the contrast of the display marks. Therefore, the combination of the primary and secondary references did not provide a sufficient basis for denying inventive step in the claimed invention.

Significance of the Case

This case illustrates the careful consideration required when evaluating inventive step based on multiple prior art references. Even if a secondary reference addresses similar general objectives, such as improving appearance, it does not automatically provide a motivation to combine with a primary reference in a way that would render the claimed invention obvious.

Practical Implications

Patent practitioners should note that when arguing inventive step, it is critical to analyze not only the objective of prior art references but also the specific teachings. Combining references requires a clear technical motivation; assumptions about general objectives alone may not suffice. This case can be used to argue against overly broad combinations of prior art that could improperly challenge inventive step.