Article 29, Paragraph 2, of the Japanese Patent Law is quoted below.
Article 29 (Conditions for Patentability)
2. Where, prior to the filing of the patent application, a person ordinarily skilled in the art of the invention would have been able to easily make the invention based on an invention prescribed in any of the items of the preceding paragraph, a patent shall not be granted for such an invention notwithstanding the preceding paragraph.
The invention described in the preceding paragraph is an invention according to Article 29, Paragraph 1. This is an invention that is publicly known or publicly practiced in Japan or a foreign country prior to the patent application, and an invention described in a distributed publication or publicized by communication over electrical communication lines. Methods for determining an inventive step include the following procedure:
- determining the claimed invention and one or a plurality of cited inventions;
- selecting one cited invention;
- comparing the claimed invention and cited invention to clarify the similar points and differences between the component elements of the claimed invention and of the cited invention; and
- attempting to develop a logic as to whether there was an inventive step in the claimed invention, from the cited inventions, other inventions (including commonly known or conventional art) and technical common knowledge.
The inventive step is determined by whether it is logically possible that the invention described in the claims is readily apparent to a person that has an accurate grasp of the technical level at the time of the application. Specifically, a person skilled in the art could select the cited invention and compare the invention according to the claims and the cited invention and grasp where the documents are identical and where they are different. Next, a logical process is established as to whether there is an inventive step in the invention as described in the claims.
The reasoning is done from various and wide-ranging points of view. For example, a study is done to ascertain whether the invention as described in the claims is simply an optimal configuration, a design change or a collection of the cited inventions, or whether it is an application of the contents of the cited inventions.
If the results show that the invention is based on this type of reasoning, then there is no inventive step in the invention described in the claims. Conversely, if this type of reasoning does not apply, then there has been an inventive step.