Date of
Judgment:
13.10.1977
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure:
Judicial (Administrative)
Subject
Matter:
Patents (Inventions)
Main
text of the judgment (decision):
1. The judgment in prior
instance shall be quashed.
2. The present case shall be remanded to Tokyo High
Court.
Reasons:
Concerning the first and second
grounds for the final appeal by the Appellant's attorneys ●●●●, ●●●●, ●●●●,
and ●●●●
Article 2, paragraph (1) of the Patent
Act (hereinafter referred to as the "Act") provides that "the
term ‘invention’ as used in this Act means a highly advanced creation of technical ideas
utilizing the laws of nature" and that the "invention" must be
technical ideas, that is, ideas which relate to technology. In light of the
purpose of the patent system, it is reasonable to construe that the technical
content of the invention must be constituted in a concrete and objective manner
to the extent that a person ordinarily skilled in the art can repeatedly work
the technical content to achieve the desired technical effect. If the technical
content is not constituted to the above extent, it must be deemed that the
invention is incomplete and that such invention cannot be considered to be the
"invention" as defined in Article 2, paragraph (1) of the Act (See
the judgment rendered by the Third Petty Bench of this Court on January 28,
1969, 1964 (Gyo-Tsu) 92, Minshu Vol. 23, No. 1, Page 54). Incidentally, as
reasons for refusal of a patent application, Article 49, item (i) of the Act
provides that an invention claimed in a patent application (hereinafter
referred to as the "invention of the application") is unpatentable
pursuant to the provision of Article 29 of the Act. Article 29 of the Act
provides in the main clause of paragraph (1) that one of the requirements for
patentability is that the invention of the application is an "invention
with industrial applicability." The "invention" referred to
therein should be understood as the meaning of the "invention"
referred to in Article 2, paragraph (1) of the Act. Thus, in the case where the
invention of the application is incomplete as an invention, it should be deemed
that it is expected and required originally and naturally by the Act to refuse
the patent application on the grounds that the invention of the application
does not correspond to the "invention" as referred to in the main
clause of Article 29, paragraph (1) of the Act. It must be deemed that it was
an erroneous interpretation and application of the above-mentioned respective
Articles of the Act for the judgment in the prior instance to rescind the present
JPO decision on the grounds that it is not permissible to refuse the patent application
for the reason that the invention is incomplete. The argument is well founded,
and it is clear that the above illegality affects the conclusion of the
judgment.
Thus, without going so far as to
determine other arguments, it is unavoidable that the judgment in the prior
instance shall be quashed. Then, it is necessary to remand the present case to
the court of prior instance in order to have the court of prior instance determine
and judge whether or not the invention of the present application is incomplete
as an invention as mentioned in the present JPO decision.
For the foregoing reasons, in
accordance with Article 7 of the Administrative Case Litigation Act and Article
407, paragraph (1) of the Code of Civil Procedure, and based on the unanimous
opinion of all judges, the judgment is rendered as mentioned in the main text.
(This translation is
provisional and subject to revision.)