Summary of the Judgment and Some Considerations
1. Scope of the Claim (Claim 1)
“5-aminolevulinic acid phosphate salt represented by the formula …”
2. Concerning the Satisfaction of Constituent Requirements for the Patented Invention:
Invention of a new substance (phosphate of a publicly known substance) – Even if the new substance is not isolated and the concentration is low, it is sufficient!
(Excerpts from the judgment)
“… The present invention is an invention of a new chemical substance, and the purpose of this invention is to provide 5-aminolevulinic acid phosphate salt as a new chemical substance, and not to improve the purity of 5-aminolevulinic acid phosphate salt. The effect of the invention can be said to be achieved even if the 5-aminolevulinic acid phosphate salt of the present invention is not isolated and even if it is not present in high concentration in a product containing it.”
3. Concerning Invalidation of the Patent (Novelty):
The Invention Has Novelty (for the same reason as in court case No. 10091 (Gyo-ke), 2022 (Presiding Judge Shoji))
(Excerpts from the judgment)
“… As it is clear from the description in the B17 document that the medium contains yeast extract, tryptone, etc., the fermentation liquid mixed with the culture medium contains various ions as foreign substances, so even if phosphoric acid is added to such a fermentation solution, it cannot be evaluated that the compound 5-aminoluvulinic acid phosphate salt was produced by the neutralization reaction of equal amounts of acid and base. In addition, there is no other circumstance under which a person skilled in the art at the time of this priority date could have found a method for manufacturing or otherwise obtaining 5-ALA phosphate* …
“Based on the foregoing, it cannot be said that a person skilled in the art at the time of the priority date who came in contact with the cited examples in this case could have found a method of manufacturing or otherwise obtaining 5-ALA phosphate*, based on common technical knowledge at the time of the priority date, without exercising creative ability such as thinking or trial and error.
“Therefore, 5-ALA phosphate* cannot be identified as the cited invention from this citation.”
(* “5-ALA phosphate” = “5-aminolevulinic acid phosphate salt”)
4. Some Considerations
In this case, although the substance name (5-aminolevulinic acid phosphate salt of the invention) was given in the cited reference, disclosure of the cited reference was not admitted, or eligibility of the cited invention was denied, because a person skilled in the art at the priority date of this case would have been unable to carry out the invention without trial and error.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Hideki TAKAISHI
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku,