Relations in Facilitate Creativity of Inventiveness and 'Unpredictable Effect’ – Pivoting on Japanese Supreme Court on August 27, 2019 Haesei 30(haeng hi) Sentencing No. 69 –

Abstract

The invention s inventiveness requirement is a very important criterion applied to patent examinations, invalidity trials and invalidity defenses in infringement litigation. In Para 2 of Article 29 of the Japanese Patent Law, if prior to filing patent applications, an ordinary person in an art can easily invent from the publicly known technique, the public use, the distribution publication, the prior art described in the electrical communication line, it is judged that there is no inventiveness. In Japan the inventiveness requirement is determined on whether the motivation to invention is disclosed in the cited invention(specificity in purpose), there is a facilitate creativity being able to be created by an ordinary person in an art(difficulty in configuration), there are predictable effects(more remarkable effect). Meanwhile, the Japanese Patent Office, the Judgment Division(our Patent Tribunal ) is facilitating creativity in preference to inventiveness and stands a position of the independent requirement theory in that there is an inventiveness if there is an unpredictable remarkable effect even without the facilitate creativity. In respect of Intellectual Property High Courts, the judgment of the predictable effect is not independent but it is complementary applied whether to determine to have facilitate creativity, such indirect fact theory in the admission of inventiveness is determined, and there are many cases of remand after reversal and the confusion has been weighted. As to the second consideration of determining the inventiveness, as to whether or not to have the predictable effect is determined based on the independent requirement theory or the indirect fact theory, the Japanese Supreme Court judged the inventiveness on the basis of the independent requirement theory, the conflict in the meantime is concluded to an end. By the ruling, in Japan if comparing the pending invention to the cited invention, even there is no facilitate creativity but there is a unpredictable remarkable effect, it is accepted to have an inventiveness, and accordingly it is expected to increase patent registrations and to decrease the patent invalid rate. It is determined that such an inventiveness judgment law in Japan may be affected to an inventiveness judgment criterion in Korea in that there is no inventiveness in case of “being able to be easily invented” by an ordinary person in an art from the cited invention.