Date of
Judgment: March 13, 1984
Issuing
Authority: Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial
(Administrative)
Subject
Matter: Patent (Inventions)
Main
text of the judgment (decision):
1. The jokoku
appeal is dismissed.
2. The Appellant shall bear
the costs of the Jokoku appeal.
Reasons:
Concerning
the First, Second, and Third Grounds of the Appeal by the Jokoku
Appellant's
attorneys KOSAKA Shimao and TAKEDA Kazuhiko:
The Patent Law does not permit patentees
to file suits directly to annul or declare the invalidity of an issued patent
when the patent has reason to be invalid. The Law arranges a trial at the Japan
Patent Office (JPO), a process applying from civil procedure law, to invalidate
patents. This system has both the petitioner and patentee take part in the
trial as the concerned parties and has appeal examiners with expertise and
experience decide whether there is a reason for the patent to be considered
invalid.
In a lawsuit to annul a trial judgment,
the Law has the parties argue only on the illegality or errors of the trial
judgment. Argument for whether the issued patent is appropriate is restricted, and is permitted indirectly insofar as the
legality of the trial. The reason for this lies in whether the patent, having
any reason to be invalid, need be discussed in trial regarding the questions of
facts and law. The Patent Law also sets annulment lawsuits for the special
jurisdiction of the Tokyo High Court, and omits the
trial at district courts. This is interpreted if a patent should be invalid or
if it has not been discussed sufficiently with the concerned parties in the
trial at JPO. Concerning these, the reason why the Patent Law Article 157 2(4)
requires the trial to write the reasons for its decision is to indemnify the
fairness of the proceedings by guaranteeing the discretion and rationality of
the appeal examiners and restraining their arbitrariness; to give expedience to
the parties considering whether to file a revoke law suit or not; and to
clarify the object being examined in court regarding the appropriateness of the
trial. Thus, reasons written in trial decisions are required to show the
grounds for the judgment based on the evidenced and approved facts of the
trial, unless there is an extenuating circumstance, such that it is obvious for
a person having ordinary skill in the pertinent art to conclude that it is
common sense or that it is standard in terms of technology.
Applying the given argument to this case,
according to the first instance decided legally by the Tokyo High Court, the
trial decision decided for the first invention in this patent is invalid on the
grounds that it is against Patent Law Article 29 (2) stating as follows: In the
case that the surplus component is used, the component is always an
alternative-possible compound, which can be used in the same way as the
component shown previously. As for the coloring product, the party cannot prove
sufficiently that this coloring product is extremely valuable when a specific
component is used. Thus, the patent claim concluded that each of coloring
products should be regarded with the same value as the coloring product
previously written of.
Comparing this to the rest of the trial
decision, these reasons alone show the conclusion that, in the first invention,
when a component is used other than cyanogens for the
X of diazo component and a component other than acylamino for Y of the coupling
component, it is easy to alternate the component with the cited invention that
uses cyanogens and acylamino. The argument does not
show the grounds off which the trial was decided based on the approved facts
proven by evidence. Thus, because, in this case, we cannot find any special
reasons to conclude that the coloring products patent is against the act or
invalid, we cannot say that the trial explained the reasons sufficiently as
required by law. Therefore, the part of the trial decision relating to the first
invention is against the law. The judgment in the first instance decided by the
Tokyo High Court, which is the same as our decision, should be approved because
it is appropriate.
Furthermore,
according to the first instance judgment decided legally, the trial decision
stated that the second invention of the patent is against the Patent Law and
should be invalid drawing from the same reason given for the first invention of
the patent. All that is explained is that there are no special technical
meanings to differentiate between the first invention and second invention. This being said, the part of the trial decision about
invalidity of the second invention of the patent is also illegal because it
lacks appropriate reasoning. Therefore, since Tokyo High Court arrived at the
same decision as us, the High Court decision should be approved because it is
appropriate. There is no illegality in the opinion, and we cannot accept the appelant’s argument.
Concerning
the number Two of the Third Grounds of the Appeal:
A
decision not showing the appropriate evidence should not be reasoned by the jokoku appeal to be appropriate unless a lack of evidence
affects the decision (Supreme Court, the Third Chamber, 1976.10. 25, Case
Number 1976 (O) Number 1323, Saiban-syu Minji, No.122
Page 135). Considering the report and the grounds for the first instance
decision, we cannot recognize that a lack of the evidence in the first instance
affected the final decision, so we cannot take the petitioner’s arguments in
the first instance decision into consideration.
Therefore,
following Administrative Litigation Law Article 7, Civil Procedure Law Article
401, 95, and 89, this Court unanimously finds as the main text of the judgment.
(This translation is provisional and subject to revision.)
(The copyright for this English material was assigned to the
Supreme Court of Japan by Institute of Intellectual Property.)