IP Newsletter | Winter 2017/18
	PATENT
	Double Patenting Between Genus and Species Claims in Chemical Inventions in Korea
	Double patenting is defined in Korea as a situation where claims from two patent applications are completely identical or substantially identical. The claims are considered substantially identical if the differences amount to a simple addition, deletion, or modification of well-known or commonly used technologies as a specific means for solving a problem, and do not involve any particular differences in terms of purpose and working effect (Supreme Court Decision 84Hu30 rendered on August 20, 1985).
	Until now, the IPTAB (Intellectual Property Trial and Appeal Board) has determined the existence of double patenting strictly based on a review of the claims of the two applications at issue. However, the IPTAB recently rendered decisions in two cases involving double patenting between genus and species patents in the chemical field (one where the priority dates were different and a second where the priority dates were the same) that raise questions about whether this legal standard still applies. Specifically, the IPTAB now appears to be comparing the claims of the later-filed application to the specification as well as the claims of the earlier-filed application in view of selection invention standards or where there is any basis to say that the claim language is unclear.
	A. Different priority dates: General formula (genus-type) vs specific compound (species-type) (IPTAB Decision No. 2015Dang1465, 2653, et al. (consolidated) rendered on August 21, 2016)
	In this case, the earlier-filed application claimed a genus of compounds but did not expressly disclose the specific compound (species) claimed in the later-filed application. According to the Examination Guidelines of the Korean Intellectual Property Office, while a species claim always anticipates the related genus claim, a genus claim only anticipates a species claim if the species easily could have been recognized from the genus claim itself.
	The IPTAB held that the specific compound claimed in the later-filed application could not be easily recognized from the earlier-filed application in view of the large number of potential combinations of substituents recited in the general formula of the earlier-filed application. However, in making its decision, the IPTAB appeared to review the double patenting issue using "selection invention" patentability standards. In Korea, certain types of species inventions are called selection inventions and are subject to higher standards for patentability, including extremely strict description requirements and a requirement to show the selection invention has qualitatively or quantitatively superior effects over the prior art. Significantly, while double patenting determinations ordinarily compare only the claims of the earlier and later references, the patentability of selection inventions depends on a review of the entire prior reference. In other words, a selection invention is novel only if the invention is not disclosed nor directly recognizable from the entire disclosure of the earlier reference.
	In this case, the IPTAB indicated that the later-filed species compound was not disclosed in and could not be directly recognized from the specification of the earlier-filed application, and that the specification of the earlier-filed application did not contain any disclosures regarding the combination of substituents leading to the species compound. Thus, the IPTAB appears to have used some hybrid standard for double patenting review by evaluating the later-filed claims against the prior reference using selection invention standards, even though the earlier-filed application was not published before the priority date of the later-filed application.
	B. Same priority date: Salts vs fumarate salt (IPTAB Decision Nos. 2015Dang823, 1552 et al. (consolidated) rendered on April 24, 2017)
	In a more recent case, the 2 applications at issue were filed on the same date. One application claimed compounds using a general formula along with "salts" of the compounds (the "genus application"), while the other application claimed a fumarate salt (the "species application"). Although the genus application disclosed a "fumarate salt" in the working example, the fumarate salt was not claimed.
	Again, the general principles of double patenting in Korea would dictate that only the "claims" of the 2 applications should be compared to see if double patenting is violated. However, the IPTAB found double patenting on the basis that the applications were substantially identical. Although selection invention standards clearly were not applicable in this case (since the selection invention standard cannot be used if the genus and species applications have the same priority date), the IPTAB still went beyond the plain language of the claims in its review, by treating the claims as if they were unclear and construing them in view of the patent specification, prosecution history and general technical knowledge in the art. The IPTAB noted that while the fumarate salt was not claimed, it was described in the specification of the genus application. Thus, the fumarate salt appears to have been imported into the genus application claim for purposes of the double patenting analysis.
	C. Our Analysis and Comments
	While the IPTAB did not expressly state in these cases that it was using a different standard to evaluate the double patenting issue, many observers have agreed that these cases were decided unusually, and have disputed whether the IPTAB's apparent new approach is appropriate. As noted above, the IPTAB's approach in these cases appears to go against the Korean Patent Act and previous court practice which has consistently required that double patenting be determined based on the claims alone. These IPTAB decisions are also contrary to other major foreign jurisdictions (e.g., the IP5, including the US, Japan, China, and the EU), which generally review double patenting based on a comparison of the claims.
	As neither of these IPTAB decisions was appealed, the decisions have become final and conclusive. However, as there are several other double patenting cases pending before the IPTAB, it remains to be seen whether the approach taken in these cases represents a real change in the double patenting standards or whether such an approach will survive appeal in another case.
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