1. Patent Claim
“An antipruritic agent comprising an opiate K receptor agonist as an effective component, wherein the opiate K receptor agonist is a compound…represented by the general formula…”.
2. Differences (1 and 2) between Present Invention 1 and Cited Invention 1
(Difference 2) Present Invention 1 is an antipruritic agent comprising Compound A as an effective component, while on the other hand, Cited Invention 1 does not use Compound A for that purpose.
3. An excerpt from the decision with regard to the determination of inventive step (underline added)
However, regarding the point stated in (i), it was nothing but a hypothesis which lacks technical grounds… Regarding the point stated in (ii), there was plenty of room remaining for a study at the time of the priority date of the Present Invention… Consequently, at the time of the priority date of the Present Invention, those skilled in the art could use an opiate K receptor agonist as an antipruritic agent based on the study by Cowan et al.; therefore, it cannot be considered that there is motivation for using Compound A of Cited Invention 1 as an antipruritic agent…
4. A modicum of consideration on this case
In this case, although a publication contains a statement which suggests using the publicly known substance for the present patented invention, the Court recognized from other publications that contradictory reports or statements existed at the time of the priority date of the Present Invention, and considered the statement contained in the publication to be nothing but a hypothesis, and then denied the motivation for using Compound A of Cited Invention 1 as an antipruritic agent.
In the case where various hypotheses existed at the time of the priority date of a claimed invention, if inventive step of the claimed invention is denied because of the presence of a motivation which is determined based on a certain hypothesis selected from said various hypotheses as a citation, a patent applicant would certainly be unmotivated to conduct a study for considering which hypothesis is correct. Therefore, the approach taken by the Court in this case is within the realm of possibility, although it may cause difficulties for a demandant of a patent invalidation trial.
A demandant of a patent invalidation trial should not feel assured only by the existence of statements leading to motivation for covering differences between the claimed invention and the cited invention contained in a publication, and it will be needed to assert and prove the state of the art and the common general knowledge at the time of the priority date of the claimed invention.
There is an important court case in which the same approach as that taken in this case was taken, that is, Intellectual Property High Court Case No. 2013 (Gyo-ke) 10209 of September 10, 2014 (Presiding Judge SHIMIZU) [“Agent for Suppressing Vascular Intimal Thickening” Case], in which the court denied that persons ordinarily skilled in the art could have easily conceived of operations and effects of a claimed invention stating that contradictory reports or statements existed at the time of the filing date of the claimed invention, and “it was a general recognition of persons ordinarily skilled in the art that it remained unknown whether or not…would actually have the effects unless it was confirmed by individual experiments”.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
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