August 31, 2018
Patent News
The Grand Panel of the Intellectual Property High Court provides guidance on what qualifies as a cited invention
The Grand Panel of the Intellectual Property High Court (the "IP High Court") decided that if an invention allegedly claimed to be a cited invention is a compound described in the form of general formula in the publication and the general formula has an enormous number of alternatives, it is impossible to extract a specific technical concept according to a specific alternative and find it as a cited invention unless there is a circumstance where the technical concept according to the specific alternative should be positively or preferentially selected. (Case No. 2016 (Gyo-Ke) 10182, 10184, judgement issued on April 13, 2018)
Background
This case is an appeal case against the Japan Patent Office (the "JPO") decision that dismissed a request for an invalidation trial based on lack of inventive step and violation of support requirement of a patent with an invention titled "pyrimidine derivatives" held by Shionogi & Co., Ltd. (the "Defendant").
The issues were [i] legal interest for litigation, [ii] inventive step and [iii] the support requirement.
Nippon Chemiphar KK (the "Plaintiff") argued that a person ordinarily skilled in the art can easily come up with the Invention by combining the Exhibit Ko 1 Invention with the Exhibit Ko 2 Invention.
Judgment
The IP High Court dismissed the claims of the Plaintiff on April 13, 2018.
Regarding issue [i], the IP High Court ruled that legal interest for litigation against the JPO decision dismissing the invalidation trial request would not be lost even after the expiration of the patent right, unless there are special circumstances.
Regarding issue [ii], the IP High Court ruled as follows:
1) First, the IP High Court made the following statement.
In the determination of such inventive step, a certain invention provided in each item of Article 29, paragraph (1) of the Patent Act to be compared with the present invention (hereinafter referred to as "the principle cited invention," and referred to as "cited invention" together with the following "auxiliary cited invention") is usually selected from the inventions that are relevant to the present invention in their technical field and falling within a range where a person ordinarily skilled in the art in the technical field targets for consideration. In particular, "an invention described in a Publication" of Article 29, paragraph (1), item (iii), should be a basis for the determination of whether a person ordinarily skilled in the art could easily conceive of the present invention on the basis of the state of the art as of the filing. Therefore, it must be a specific technical concept to be extracted from the description of a Publication.
.., if a compound is described in a form of a general formula in a publication and the general formula has an enormous number of alternatives, a person ordinarily skilled in the art fails to extract a specific technical concept according to a specific alternative from the description of the publication in the absence of circumstances where the specific technical concept according to the specific alternative should be positively or preferentially selected.
This logic shall also apply to the finding of, from publications, an auxiliary cited invention, which is another "invention described in a publication" provided in Article 29, paragraph (1), item (iii) corresponding to a difference between the present invention and the principle cited invention (hereinafter referred to as "the auxiliary cited invention"), in the case of determining whether the present invention is easily conceivable by applying the auxiliary cited invention to a principle cited invention.
.., in the case of determining whether the present invention is easily conceivable by applying the auxiliary cited invention to a principle cited invention, it is determined by: [i] Comprehensively considering the suggestions in a principle cited invention or an auxiliary cited invention, the relevance in technical field, and the commonality in problem, effect, and function, a determination is made as to whether there is a motivation to apply the auxiliary cited invention to the principle cited invention and arrive at the present invention, and [ii] Considering the presence or the absence of factors inhibiting the application as well as the presence or the absence of unexpected significant effects in combination.
2) Next, the court showed the following judgements for this case.
Difference Point (1-i) between Invention 1 and the Exhibit Ko 1 Invention is as follws;
"In the Invention 1, X is an imino group substituted with an alkylsulfonyl group, whereas in the Exhibit Ko 1 Invention it is an imino group substituted with a methyl group"
It cannot be seen that the technical idea of changing the group at the 2-position of the pyrimidine ring into "-N(CH3)(SO2R')" may be extracted from Exhibit Ko 2 by the following reasons. It cannot be said that Exhibit Ko 2 describes the structure according to the above difference (1-i).
Exhibit Ko 2 describes "-NR4R5" as an alternative of substituent group R3 at the 2-position of the pyrimidine ring of a "particularly preferable compound" among the compounds represented by general formula (I) of Exhibit Ko 2, and also describes "methyl group" and "alkylsulfonyl group" as an alternative for R4 and R5.
The compound where R3 is "-NR4R5, and R4 and R5 are "methyl" and "alkylsulfonyl" is one alternative among 20 million or more.
Exhibit Ko 2 not only describes "particularly preferable compound" but also "particularly extremely preferable compound," which fails to describe "-NR4R5" as an alternative of R3.
Exhibit Ko 2 describes Working Example 8 (R3 is methyl), Working Example 15 (R3 is phenyl), and Working Example 23 (R3 is phenyl) as working examples of the compound having the same structure as the Exhibit Ko 1 Invention in X and A of the general formula (I) of Exhibit Ko 2. It fails to describe "- NR4R5" for R3.
Comments
At the JPO stage of this case, the JPO denied the motivation to apply the Ko 2 Invention to the Ko 1 Invention.
However, according to the Examination Guidelines for Patent and Utility Model in Japan (the "Examination Guidelines"), in cases where the "matter described in the publications" are described in the form of Markush, in order to specify the "inventions described in publications", the Examiner shall consider whether a person skilled in the art can come up with the invention in which only one of the options is selected.
(* Note that the Examination Guidelines state "inventions described in publications" shall mean inventions recognized from the descriptions in the publications or equivalents to such descriptions in the publications.)
Therefore, the JPO could have determined that a person skilled in the art cannot grasp the invention in which only one of the options is selected in the Exhibit Ko 2 and therefore the Invention does not lack the inventive step. However, the JPO did not decide on this basis.
The following portion of this judgement is similar to the above-mentioned standard described in the Examination Guidelines;
"It is impossible to extract a specific alternative from an enormous number of alternatives and invalidate an invention for lack of an inventive step based on applying the specific alternative to a principle cited invention unless there is a circumstance where the technical concept according to the specific alternative should be positively or preferentially selected."
Also, the method to determine whether a person skilled in the art would easily have been able to come up with the invention by applying the auxiliary cited invention to a principle cited invention was shown by the IP High Court. The method is similar to the method shown in Part III Chapter 2 Section 2 Inventive Step of the Guidelines, shown in the below chart.
Therefore, the JPO will most likely continue to take the method shown in the Examination Guidelines in the future for the determination of the inventive step.
Written by: Ms. Emiko Yano (Patent Attorney)