【PATENT ★★】”Topical Ophthalmic Formulation for Treating Allergic Eye Diseases” Case: A case in which the IP High Court, to which the case was remanded by the Supreme Court, found that an inventive step was acknowledged because the Present Invention has an unpredictable and remarkable effect, although the previous lawsuit judgment which determined that the different feature (the use) in the Present Invention would have been easily conceivable became final and binding.

―IP High Court Case No. 2019 (Gyo-ke) 10118 of June 17, 2020 (Presiding Judge MORI)  <※Case Remanded to the IP High Court by the Supreme Court (Supreme Court Case No. 2018 [Gyo-hi] 69 of August 27, 2019)>

Issue ① ― Regarding an “unpredictable and remarkable effect” to be taken into consideration in determining an inventive step
 
<The Present Decision of the IP High Court> The Court considered whether or not the Present Invention has an unpredictable and remarkable effect in line with the criteria for judgment indicated by the Supreme Court, and in conclusion, the Court acknowledged such an effect and determined that the Present Invention has an inventive step.

Issue ② ― Role of an “unpredictable and remarkable effect” in determining an inventive step ― the adoption of a theory of “independent requirement”
 
<The Present Decision of the IP High Court> The Court adopted an “independent requirement” theory and clarified that the binding effect of the previous lawsuit judgment which determined to the effect that the structure (use) of the Present Invention would have been easily conceivable (IP High Court Case No. 2013 [Gyo-ke] 10058 [Presiding Judge TOMITA]) does not block the argument of an “unpredictable and remarkable effect” of the Present Invention.

Writer: Hideki TAKAISHI

Supervising editor: Kazuhiko YOSHIDA

Contact information for inquiries: h_takaishi@nakapat.gr.jp

Hideki TAKAISHI

Attorney at Law & Patent Attorney

Nakamura & Partners

Room No. 616, Shin-Tokyo Building,

3-3-1 Marunouchi, Chiyoda-ku

Tokyo 100-8355, JAPAN