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IP Newsletter | Witner 2016/17
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PATENT
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Korean Patent Court Requires Showing of "Reasonable Expectation of Success" to Invalidate Medicinal Use Patents
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In a recent case, the Korean Patent Court upheld the validity of a second medicinal use patent while clarifying a "reasonable expectation of success" test for evaluating prior art when assessing the inventiveness of patents.
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In Korea, the rule is that a patented invention lacks inventiveness over prior art if a person skilled in the art easily could have arrived at the patented invention from the prior art in view of the existing technology, technical knowledge, the basic problem to be solved, the trend of development, or other demands in the relevant art at the time of filing the invention (Korean Supreme Court Decision No. 2005 Hu 3284 rendered on September 6, 2007). However, there has been no specific guidance until now regarding how to evaluate inventiveness while accounting for different levels of technological difficulty in various fields of industrial technology. This has been a particular problem for pharmaceutical or biotech inventions, since the effects of such inventions are well known to be much less predictable than inventions in other fields such as mechanical inventions.
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In the above case, the Patent Court held that "considering the special circumstances that apply to developing anticancer agents, the inventiveness of a medicinal use invention concerning an anticancer agent should be denied only if a person skilled in the art would have had a reasonable expectation based on the prior art that a potential anticancer medicinal use would be successful, and not merely a speculative possibility." The Court upheld the validity of the patent after determining that the patented invention, which is directed to an anticancer medicinal use, could not have been reasonably expected to be successful based on the cited prior art in view of the technical difficulty involved in the field.
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By requiring parties challenging medicinal use patents to demonstrate that an ordinary practitioner would have had a reasonable expectation of success in developing the patented invention based on prior art disclosures and knowledge, the Patent Court appears to have substantially supported the inventiveness of medicinal use inventions in Korea going forward.
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Kim & Chang represented the patentee in the case.
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If you have any questions regarding this article, please contact:
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For more information, please visit our website: www.ip.kimchang.com
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