Date of
Judgment:
10.3.1976
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):
Point
5 in the Statement of Reasons for a Jokoku -Appeal is hereby ruled to be
groundless.
Reasons:
Regarding
point 5 in the Statement of Reasons for a Jokoku -Appeal presented by Attorney
Iwao Niinaga:
The
essence of the Statement of Reasons for an Appeal is as follows: regarding the
facts asserted by the appellants before the Patent Office and the court below,
the original judgment that does not show judgment in this respect on the ground
that the said facts were not put for examination and judgment before the Patent
Office is illegal, representing a misapplication of the law and goes against
the Supreme Court precedent (the Judgment of the Second Petty Bench upon the
said agency Case 1951 (O) No. 745 rendered on October 16, 1953, Saibanshu-Minji
No. 10, at 189).
According
to the old Patent Law (Law No. 96 of 1921; hereinafter referred to as "the
law") applicable to this case, it is stipulated that the stake-holder who
claims that there is a cause for invalidating a particular patent may seek an
appeal to the determination for invalidation of the relevant patent (Article
84), that with regard to a determination reached in the said appeal to the
determination or the result of examination of the relevant application, the
party subject to such decision or examination may seek an appeal to the
determination (Article 109), and on the other hand, that a lawsuit regarding a
matter which can be addressed by seeking an examination or appeal to the
determination can be instituted only as a lawsuit against an determination of
the appeal reached in the appeal to the determination (Article 128-2, Paragraph
4), AND, that a lawsuit against an determination of the appeal reached in an
appeal to the determination shall fall under the exclusive jurisdiction of the
Tokyo High Court (Paragraph 1 of the said article). Furthermore, it is
stipulated that when there are found to be grounds for an action entered in the
said lawsuit, the court is to revoke the relevant the determination, and once
the said revocation is effected, the appeal to the determination in charge of
the relevant appeal to the determination are required to conduct an examination
and reach a decision (Article 128-5). In these respects, it is
recognized that in the case where an administrative disposition, namely, a
decision to grant a patent or a decision of refusal through examination was
wrongly effected, the law calls for the completed procedures for the
examination and appeal to the determination (in the case of an examination,
only the appeal to the examination) presided over by appeal examiners with
expertise and experience in any case to be used as the procedures for
redressing such disposition, unlike the case with general administrative
dispositions, while prescribing that a lawsuit for revocation may be
instituted, not against a decision to grant a patent or a decision of refusal
through examination as the original disposition, but against a determination
reached in the appeal to the determination, and in the said lawsuit, the law
limits the point at issue to nothing but the legality or illegality of the said
determination while allowing the propriety of a patent granted or an
application rejected through examination to be indirectly challenged only from
the perspective of whether a determination reached in the appeal to the
determination is proper or not.
Next, in reference to the procedures for the appeal to the
determination or examination set forth by the law, concerning an action seeking
an appeal/trial to invalidate a particular patent, it is stipulated that a
specified form of written motion for an examination describing a stated case
and reasons shall be filed (Article 86), that concerning the written motion
filed, a duplicate thereof shall be served on the respondent to give an
opportunity to file a written statement of defense (Article 88, paragraph 1),
that in an appeal, reasons other than ones stated in the written motion may be
also examined, but in such case, the parties should be given opportunities to
state their cases with regard to such reasons (Article 103), while the law lays
down procedures similar to civil proceedings, including exclusion, challenge of
appeal examiner(s) involved in the appeal/trial (Article 91 to Article 96), an
open oral examination system (Article 97), participation of stake-holders
(Article 98, 99), examination of evidence (Article 100) and so on, and
prescribes that these provisions shall be applied mutatis mutandis to the
appeal. In this respect, it is clear that as far as an appeal/trial for
invalidation of a patent is concerned, the law requires the cause for
invalidating the patent contested therein to be specified and clarified for the
parties, and as far as the procedures for the examination are concerned, the
law employs such structured procedures that the said specified cause for
invalidating the relevant patent is contested in offense and defense, AND the appeal
examiners examine and judge nothing but this point at issue; it is understood
that Article 117 of the law providing that "whenever a finalized
appeal/trial decision regarding a patent or the validity of permission under
Article 53 is kept on the registry, no one can bring an action to seek the same
appeal/trial based on the same facts and the same evidence," because along
with the said structured procedures, it intends to give a finalized
appeal/trial decision the effect of non bis in idem in a practical sense with
regard to matters actually judged therein. In addition, the reason why the law
prescribes that a lawsuit for revocation of a determination reached in an
examination shall fall under the exclusive jurisdiction of the Tokyo High Court
while allowing for one less instance in fact-finding proceedings, must rest on
the grounds that with regard to the existence/non-existence of the relevant
cause of invalidation, thorough examination was completed with the
participation of the parties during the examination and the examination for
appeal proceedings.
It should be construed as the purport of the law that in
referring to the structure and nature of an opposition system and appeal/trial
proceedings concerning patent-related decisions set forth by the law as
described above, in the case of a lawsuit for revocation of a determination
reached in an appeal to the determination for invalidation of a patent where
the judgment thereof is contested in terms of illegality, the issue that was
actually contested in the relevant appeal/trial proceedings and related to a
specific cause for invalidation examined and judged should be exclusively the
subject matter for the appeal/trial examination while other causes for
invalidation cannot be asserted as reasons for contending the illegality of the
relevant appeal/trial decision in the said lawsuit and brought before the court
for judgment.
Then, referring to the specification of the cause for
invalidation as described above, each item of Article 57, Paragraph 1 of the
law enumerates the cause of invalidation of a patent in abstract terms, but
each cause enumerated thereunder is different in nature and substance as the
cause of invalidation of a patent, so it is appropriate to deem each of the
causes as an independent and separate cause of invalidation; furthermore, as to
item 1 of the said paragraph of the said article, each ground of violation of
the provisions enumerated therein is different in nature and substance, again,
it is appropriate to construe that each ground of violation of the provisions
should involve a different cause of invalidation. However, whether or not it is
sufficient to specify the cause of invalidation in abstract terms solely
relying on the above-described items and/or cases in violation of the
provisions should be carefully determined, in view of the mechanism of the law
governing the patent system, especially with consideration to the purport of
Article 117 of the law, which requires the effect and scope of non bis in idem
in connection with a finalized appeal/trial decision to be limited by baring
the same facts and evidence therefrom.
In our opinion, the fundamental element of patentability are
to fall under "a novel industrial invention" set forth in Article 1
of the law, and in deciding whether a patent is granted or not, or whether a
granted patent is invalid or not, is a matter of the most frequent controversy,
after all, whether the requirement under the said article is met or not,
particularly, whether the relevant invention is "novel" or not.
Article 4 of the law defines the "novelty" of an invention described
above as not falling under "the thing publicly-known or publicly used in
the country before the application" or "the thing described in a
publication circulated in the country before the application to the extent that
it is easy to implement." In other words, it is stipulated that whether or
not a particular invention falls under "being novel" defined in the
law (hereinafter referred to as "novelty") should always be
considered and judged in comparison with "the thing publicly-known or
publicly used" or the thing that has appeared in publicly-known publications
(hereinafter referred to as "publicly-known fact") of the time.
However, such publicly-known facts exist over a wide spectrum so that it is
extremely difficult to grasp all publicly-known facts to be compared in
connection with the invention at issue, but also even if there exist
publicly-known facts with such bearing, because technical features embodied
therein are of wide variety, it is necessary to examine the invention at issue
in one-to-one comparison with each of these publicly-known facts for judgment
in terms of novelty. It is understood that the law sets forth the systems and
procedures in relation to the above-described uniquely structured examination,
appeal/trial for invalidation, and appeal to the determination because it takes
into account such difficulty and specialty inherent in judging a particular
invention in terms of its novelty. It can be understood that the purport of the
said provisions of Article 117 of the law reflects the necessity of judging a
particular invention to be novel or not in comparison to practical technical
details embodied in specific publicly-known facts cited as evidence on a
one-by-one basis. Accordingly, as it requires that the cause of invalidation be
a definitely specified one and for example, it should be recognized that a
claim for invalidation by comparison to a specific publicly-known fact and a
claim for invalidation by comparison to other publicly-known facts constitute
different causes, even if both equally address the novelty of an invention.
For the above reasons, in a lawsuit for revocation of a
determination, any cause for invalidation by comparison to publicly-known facts
that were not examined and judged in the course of the appeal to the
determination cannot be cited as a reason for contending the relevant decision
to be illegal or upholding it as legal. The former precedents of this court
that are contrary to this opinion (the Judgment of the Third Petty Bench upon
Case 1958 (O) No. 567 rendered on December 20, 1960, Minshu Vol. 14, No. 14, at
3103; the Judgment of the First Petty Bench upon Case 1964 (Gyo-Tsu) No. 62
rendered on April 4, 1968, Minshu Vol. 22, No. 4, at 816) should be changed.
Further, the same holds true for the specification of the reason for a decision
of refusal as the specification of the cause of invalidation (see Article 72 of
the law with regard to notice on reasons for refusal and Article 113, Paragraph
1 of the law with regard to application mutatis mutandis thereof in Kokoku
appeals/trials). Hence, regarding a lawsuit for revocation of an appeal/trial
decision reached in a Kokoku appeal/trial against the decision of refusal, it
should be held true that specific, concrete reasons for refusal which were not
judged in the said appeal/trial decision cannot be asserted in a lawsuit.
Therefore, the Judgment of the Second Petty Bench upon Case 1951 (O) No. 745
rendered on October 16, 1953, Saibanshu-Minji No. 10, at 189 should be changed
as well.
When this case is considered from the above viewpoint, it is
found that some of the facts that the Appellant argues are illegal in the
Statement of Reasons for a Jokoku-Appeal because the court below failed to
examine and judge the said facts are concerned with an article/item different
from the article/item enumerating the cause of invalidation that was examined
and judged in the said appeal/trial decision, and the rest are concerned with a
violation of Article 1 of the law, but as the Appellant contends over
publicly-known facts different from the publicly-known fact that the said appeal/trial
decision determined to be the cause of invalidation, we uphold as proper the
court below ruling that with regard to the propriety of the said appeal/trial
decision, the claim based on these facts, that is, different causes of
invalidation from the ones examined and judged therein must not be taken into
account, we sustain that the original judgment is free from illegality opposed
to the argument, and thus the Appellant's case cannot be accepted.
Therefore,
the judiciary opinion is unanimously formed and the judgment rendered as the
main text.
(This translation is
provisional and subject to revision.)