اليابان

Date of Judgment: April 28, 1992

Issuing Authority: Supreme Court

Level of the Issuing Authority: Final Instance

Type of Procedure: Judicial(Administrative)

Subject Matter: Patent(Inventions)

Summary of the judgment (decision):

1. In cases where a judgment to revoke a JPO decision invalidating a patent was rendered on the grounds that a person ordinarily skilled in the art cannot be considered to have been able to easily make the invention based on a specific cited document, and the JPO issued another decision, subject to the binding force of said judgment, to the effect that a person ordinarily skilled in the art cannot be considered to have been able to easily make the invention based on the same cited document, in an action for the revocation of the second JPO decision, the submission of any allegation or proof arguing that a person ordinarily skilled in the art would have been able to easily make the invention based on the same cited document should not be allowed.

2. In cases where a judgment to revoke a JPO decision invalidating a patent was rendered on the grounds that a person ordinarily skilled in the art cannot be considered to have been able to easily make the invention based on a specific cited document, even when, in the second trial procedure, a party alleged that a person ordinarily skilled in the art would have been able to easily make the invention based on other cited documents, etc. in addition to said specific cited document, if the party did not mean to allege that a person ordinarily skilled in the art would have been able to easily make the invention based on these additional cited documents, etc. alone, or to allege that a person ordinarily skilled in the art would have been able to easily make the invention based on the additional cited documents, etc. in combination with said specific cited document that had been examined in the previous action, the second JPO decision to the effect that a person ordinarily skilled in the art cannot be considered to have been able to easily make the invention based on said specific cited document and the additional cited documents, etc. should be held to have been issued subject to the binding force of the judgment of revocation, and cannot be held to be illegal in an action to seek revocation of the second JPO decision.