JP-EP-USPatentPracticeComparison-日本欧洲美国专利制度比较研究.doc

JP-EP-US Patent Practice Comparison

JP
EPC
US
Unpatentable subject manners
Matters in contravention to public order and morality
･Discovery, scientific theory, mathematic method, artistic work, mental action, computer program, information presentation, surgery or medical treatment

･Matters in contravention to public order and morality, variety of plants and animals
Not particularly defined in Patent Law
Definition of invention
Advanced creation of technical ideas utilizing natural laws
Industrially applicable mattersProducible and applicable matters in industrial fields including agricultural industry
New and useful machinery, product, process, compound, and improvements thereof
Novelty
･Not disclosed in prior art

･Not published, not publicly known or used anywhere in the world

･Exceptions to lack of novelty would be applicable in 6 months subjected to conditions
･Not comprising a part of state of the art

･Not published, not publicly known or used anywhere in the world

･Exceptions to lack of novelty would be applicable in 6 months subjected to conditions
･Not disclosed in prior art before the date of invention

･Not published anywhere in the world, Not publicly known or used in U.S.A.

･Grace period is 1 year
Inventive steps(Non-obviousness)
A patent is granted to an invention that could not have been easily accomplished by a person skilled in the art.
A patent is granted to an industrially applicable invention being novel and inventive.
A patent is granted to such an invention that a difference between a subject matter of the invention and prior art is not obvious as a whole to a person skilled in the art at time of invention
Examination guideline
・Whether or not it can be demonstrated that an invention could have been easily accomplished by a person skilled in the art in reference to state of the art.　When it is demonstrated so, inventive step is denied.

・Whether or not inventive step can be denied based on general technical knowledge and comparison between claimed invention and cited invention to determined identical and different points

・ Whether or not it is a mere change of design, or an aggregation of known techniques. Whether or not there is a motivation in cited invention

・Advantageous effect described in Description can be a material for affirmation of inventive steps
・ Whether or not it goes beyond the normal progress of technology.

・Whether or not an invention is obvious as a whole when construed as a whole

・ Whether or not it is a mere aggregation of known techniques

・Problem-solution approach

(1) Identification of the closest prior art
(2) Establish an objective technical problem
(3) Would-Could approach
(4) Combination of prior arts
・Determined based on PrecedentsSupreme court decision on Graham Case

・ Determine scope and content of prior art

・ Consider secondary matters

・ Determine difference between prior art and claimed invention

・ Determine state of the art of skilled persons Supreme court decision on ＫＳＲ Case

・ TSM test is not the only criterion for obviousness analysis

・ Test for obviousness analysis should be more nonrestrictive and flexible

・ A number of different tests can be applied for obviousness analysis

・ To raise obviousness rejection based on combination of prior arts, an examiner has to provide a clear basis

・ Cited reference does not necessarily have the same problem to be solved as one the patent works on

・ “Obvious to try” is applicable to the test for obviousness analysis

・ Mutually relating teachings in cited references, effects known and desired by a person skilled in the art, and background knowledge of a person skilled in the art may be a material for obviousness rejection

・ Whether or not it has an unexpected effect

・ Whether or not problems solved by claimed invention has been previously known