Invention and Comparison of Patenting and the Examination Guidelines about Inventive Step in Japan, the U.S.A. and the EU—Based on the Opinion Focusing on Principles and Their Use

Abstract

1) Author, as to inventions, categorized into physical-object inventions whose shape, structure etc. were focused on and material inventions whose characteristics were focused on, according to their appearances and properties. Six factors, that is, composition, shape, structure of an article, physical properties, chemical properties of a material, and their transformation are extracted from this categorization. 2) Author also found out that inventions could be analyzed to the view of principle, use of principle and the ways of its use (which is called “principle use”), attaching the importance to principle based on the process of the establishment of inventions. Author formulated that technology and inventions could be put in order two-dimensionally, given an abstraction and normalized, setting the above 6 factors and principle use as two axes (which is called the Opinion). On the basis of the Opinion, Author analyzed, as to the concept of an invention, its patentability (subject matter eligibility) and inventive step in Japan, the U.S.A. and EU. As to the inventive step, Author analyzed the differences in the framework of determination, and the obstructive factors and the prevention of hindsight which specifically tend to become problems in the examination guideline, citing court decisions. The setting of the objective technical problem, which is used in the EU, aims at making the objection of the judgment of inventive actions (subjective); on the other hand, the Opinion can set the objective facts of principle use as a unified criterion, which may lead to more articulate decisions. By using the Opinion, the recognition of an inventor, the determination of inventive step, and furthermore, the interpretation of claims can be made more rationally. It is hoped that the consideration and its result using the Opinion will be practically used in the world.