News & Topics

IP Court Case Summary:H24 (gyoke) 10412

August 9, 2013, the Intellectual Property High Court (IP High Court) reversed JPO board of appeal’s decision on the trial against examiner’s final rejection. 
 
1. Claimed Invention and Cited Invention
The title of the invention at issue is “A tip for makeup”. Claimed invention is “a tip for makeup whose edge in the coating part is linear or plain, in which the end of the holder is made from the porous (not bundle) material by adhesion or outsert molding”.
 
                     
[Claimed Invention]
(note) 1: Coating Parts, 2: Fixture, 3: Tip, 4: End Edge
 
Cited invention is “a core of eyeliner in which eyeliner has a thin plate-like core (2) with the same thickness and different width at the both ends of a hollow cylindrical main part (1), and in which the edge of surface (6) is generally plain and one side of surface is generally linear and the material of core is sponge-like.”
 
                           
[Cited Invention]
(note) 1: Main Body, 2: Core, 3: Frame, 4: Main Body (back side), 5:Main Body (front side)
 
2. Decision by Appeal Board
In the decision by Appeal Board, “a core of the eyeliner to draw eye line” of the cited invention is decided to be equivalent to “a tip for makeup” by judging from the meaning of words and shape or function of those two. Therefore, “a tip for makeup whose edge in the coating part is linear or plain” is common between those inventions. Then, inventive step was finally denied.
 
3. Decision by IP High Court
“A tip for makeup” of the claimed invention is used for a tool for eye shadow in eyelids by coating and painting. It can be also used for drawing linear eye line. “A core of eyeliner” of the cited invention is a tool for drawing linear eye line. However, it cannot be also used for eye shadow by coating and painting. Thus, even if the use is common in a part between “a tip for makeup” and “a core of eyeliner”, the main uses are different. “A tip for makeup” and “a core of eyeliner” are not considered to be the same invention as a tool for makeup.
 
<Comments>
According to this decision, “Use” should be considered by “a main use”. “Use” is the same when “a main use” is the same even if some other uses are different between two inventions. It should be important to consider “which is a main use?”. Also, as a basic issue, the border between “a main use” and “the other uses” is important, which should be discussed from now.
 
http://www.ip.courts.go.jp/hanrei/pdf/20130813104622.pdf