A Ruling on Joint Invention in Japanese Patent Law — Trial Practitioners' Study Group Report 2017

I. Case:

Invalidation 2011-800266 (Patent No. 第３６９０８６４号) (平成２５年７月３日: trial decision finding the demand well-grounded → trial decision rescinded by the IP High Court)

II. Key Points:

1) Interpretation of a contract concerning technical guidance, as a premise for judging the joint-application requirement

2) Recognition of joint inventors, and the burden of proof when asserting that one is an inventor

III. Outline of the Case

1) Outline of the trial decision and the judgment

An invalidation trial was demanded on the grounds of a usurped application (meaning an application filed by a person without the right) titled "Method for Producing a Photocatalyst Body," and of a violation of the joint-rights-holder requirement. The trial decision held the patent invalid on the ground that a joint inventor had been omitted, but the judgment rescinded this trial decision. The conclusion was that there was no violation of the joint-application requirement and that the patent was not invalid.

A contract titled "Confirmation Document Concerning the Handling of Inventions Related to Technical Guidance" existed. Article 1 of that contract set the premise that the invention fell under a prescribed "invention related to technical guidance," and Article 2 provided that "...when the two applicant companies intend to file a patent application for an invention related to technical guidance that they have made independently, they shall obtain in advance the consent of the Governor (Saga Prefecture) regarding the fact that they made the invention independently."

Both the Patent Office trial board and the court found that the invention did not fall under Article 1, and acknowledged that there had been a violation of Article 2.

In response, the trial decision judged this to be a violation of the joint-application requirement; however, the court rescinded the trial decision, holding that a violation of Article 2 did not mean that Saga Prefecture thereby acquired the right to obtain the patent.

2) Points for consideration: In joint invention, it appears that one may also need to obtain confirmation that one party's contribution was already publicly known prior art. In the case of joint invention, even greater care must be taken in drafting contracts and the like.

Moreover, where interpretation is difficult, as with Article 2 of this contract — that is, specifically about what is consent being obtained? The application? — there must be no provision that allows differing interpretations of the contractual terms, and the interpretation of every provision must be clear.

On the other hand, the conclusion was reached that where an invalidation trial is brought on the grounds of a violation of the joint-application requirement, i.e., a usurped application, the burden of proof lies with the patentee.

3) For reference, to be an inventor, one must be "a person who, in the process of conceiving and concretizing an idea for solving a problem, creatively contributed to completing the characteristic part of the invention," where "the characteristic part of the invention" means "the part, among the constituent elements of the invention stated in the claims, that is not found in the prior art" — that is, the part forming the basis of (contributing to) the means of solving the problem unique to that invention. (IP High Court, 平成１９年(行ケ)第１０278号)

On this point, in the field of chemistry, (IP High Court, 平成18年(ネ)第10020号) is also instructive.

That is, an invention has three elements — presentation of the problem to be solved, presentation of the means of solution, and confirmation of the solution of the problem — and although the presentation of the means of solution is generally regarded as the most important of these, this case held that in the field of chemistry the confirmation of the solution of the problem is important.

4) For reference, there is also a minority view (the two-stage theory), which divides the process by which an invention comes into being into the provision of an idea and the concretization of the idea, and judges the matter by questions such as: Is the idea new? Is the concretization to an obvious degree? However, in this case, it was clear that C was not a joint inventor regardless of which theory was adopted.

In any event, identifying the inventor is no easy matter. Even where a company has compensated an employee under the employee-invention system, there may be cases in which that person should be excluded from being an inventor during the examination process, and cases in which a new person is added. It is a difficult problem and remains a long-standing challenge of the patent system.

5) Although this concerns Japanese patents, the content is no different from the Korean patent system, so it is also instructive for the Korean system.

6) Reference precedents for review — the contents will be organized at a later date.

Supreme Court judgment, 最判平成１３年６月１２日 (平成９年(オ)第１９１８号) ("生ゴミ処理装置" / Garbage Disposal Device case)

Osaka District Court judgment, 大阪地判平成２２年１１月１８日 (平成２１年(ワ)第２９７号) ("コンクリート脱塩用装置" / Concrete Desalination Device case)

IP High Court judgment, 知財高判平成１８年７月１９日 (平成１８年(ネ)第１００２０号) ("洗浄処理剤" / Cleaning Agent case)

IP High Court judgment, 知財高判平成２５年３月２８日 (平成２４年(行ケ)第１０２８０44号) ("動態管理システム" / Dynamic Management System case)

Tokyo District Court judgment, 東京地判平成２６年１２月２５日 (平成２５年(ワ)第１０１５１号) ("カラーアクティブマトリックス型液晶表示装置" / Color Active Matrix Liquid Crystal Display Device case)

IP High Court judgment, 知財高判平成２９年１月２５日 (平成２７年(行ケ)第１０２３０45号) ("噴出ノズル管の製造方法" / Method for Manufacturing a Spray Nozzle Tube case)

IP High Court judgment, 知財高判平成２０年５月２９日 (平成１９年(ネ)第１００３７号) (Action for Damages, appeal case)

Tokyo District Court judgment, 東京地判平成１８年１月２６日 (平成１４年(ワ)第８４９６号) (Claim for Consideration on Assignment of the Right to a Patent Application case)

Author: Japanese Patent Attorney Jeong Won-gi