2001Hu2740 Rejection Decision(Patent)

by Supreme Court of Korea

Justices Byun Jae-seung(Presiding Justice), Yoon Jae-sik, Kang Shin-wook(Justice in charge), Koh Hyun-chul

Main Issues

1. Elements for the grant of the patent to a selective invention and the method of proving the effect
2. The case which reversed and remanded the court below's decision holding that one chemical compound is equally effective merely based on the data proving the excellence of the other chemical compound's effect out of various chemical compounds derivable from a selective invention

Summary of Decision

1. The so-called selective invention means an invention which states the element of the preceding or already publicized invention as its super ordinate concept and whose elements entirely or partly consist of subordinate concepts derived from the above super ordinate concept. A patent can be granted to a selective invention on the conditions that first, a preceding invention has not yet disclosed subordinate concepts comprizing a selective invention in concrete; second, subordinate concepts possess effects different in quality from the preceding invention, or if not, at least, there exist conspicuous differences in effect as measured quantitatively between them. In this case, it is enough that the specifications of a selective invention state explicitly the above mentioned kinds of effects compared to the preceding invention, and the results of comparative experiments verifying conspicuousness of its effects in concrete need not be stated, and if suspicions as to its effects are raised, an applicant for a patent may allege and prove its effects after the date of patent application by means of submitting specific comparative experimental data, etc.
2. The case reversing and remanding the court below's decision on the ground that among chemical compounds included in the invention for which a patent is applied, the chemical compound referred to as "nerve protecting croman chemical compound" excludes from desirable chemical compounds a chemical equation(IV) compound, and because it is obviously clear that the chemical compound(IV) among chemical compounds of the patent applied invention of this case can be less effective than other chemical compounds since excellence of optical activity of one optical isomer cannot guarantee that of the other optical isomer, and rather, the other optical isomer could have an inferior optical activity or negative side-effects from the pharmaceutical perspective, and therefore, it is hard to acknowledge the effect of chemical equation(IV) compound merely based on the evidence of the results of comparative experiments as to the chemical equation(III) compound

Reference Provisions

1. Article 29 (2) of the Patent Act

Article 29 of the Patent Act (Requirements for Patents)

(2) Notwithstanding paragraph (1), where an invention could easily have been made prior to the filing of the patent application by a person having ordinary skill in the art to which the invention pertains, on the basis of an invention referred to in each subparagraph of paragraph (1), a patent shall not be granted for such an invention.

Reference Case

Supreme Court Decision 2001Hu2375 delivered on December 26, 2002 (Gong2003Sang, 543)

• Plaintiff, Appellee: Pfizer Inc. (Patent lawyer Kim Chang-sae and 3 others, Counsel for plaintiff-appellee)

• Defendant, Appellant: Head of the Korean Intellectual Property Office

• Judgment of the court below: Patent Court Decision 2000Huh5551 delivered on July 13, 2001

Disposition

The judgment of the court below is reversed and the case is remanded to the Patent Court.

Reasoning

1. Judgment of the court below

A. The patent claim No. 1 of the invention of this case for which a patent is applied (hereinafter the "Claim No. 1 invention of this case"), referred to as "nerve protecting croman chemical compound," is related to a (3R,4S)-3-[4-(4-fluorophenyl)-4-hydroxy-piperidine-1-yl] -croman -4,7-diol compound {chemical equation(1) compound of this case} described by a chemical equation(1) set out in the below, its optical isomer, as well as its salt permitted for pharmaceutical usage. The other invention publicized before the patent application date of invention of this case (hereinafter the "Cited invention") in the Patent Office Report No. 93-11041 is related to a general formula(1) chemical compound and its salt as illustrated in the below. The kinds of chemical compounds derivable from the general formula(1) of the Cited invention are quite extensive depending upon the choice among A, B, X, X1, Z, Z1, n and m, and a chemical compound, which is identical with the chemical equation(1) compound of this case{the definition of a substituent in the general formula(1) is omitted}, is obtained if H replaces A and B respectively; X does O; X1 does OH; Z does OH; Z1 does F; n takes the value of 1; and m, the value of 0.

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Chemical Equation (I)		General Formula (I)

B. The patent claims Nos. 2∼4, 17 of the invention of this case for which a patent is applied are related to a racemic body, a right side-rotated optical isomer, a left-side rotated optical isomer, and a tartarate ethanolrate compound from a right side-rotated optical isomer of the chemical equation(1) compound of this case, and all of them belong to the chemical compound group of the Cited invention like the Claim No. 1 invention of this case, since all of them merely define specifically the chemical compound of the Claim No. 1 invention of this case and its salt.

C. The chemical equation(1) compound of this case is obtained by replacing a substituent Z1 of the general formula(1) of the Cited invention with F. On the other hand, the Cited invention presents in its implementation examples of Nos. 1∼35 only the compound replacing Z1 with H, and states that "the desirable general formula(1) chemical compound is the chemical compound replacing Z1 with H," although the Cited invention replaces Z1 of the general formula(1) chemical compound specifically with H, F, Cl, Br, or (C1∼C3)Alkyl in its specifications. Therefore, the Cited invention cannot be viewed as disclosing the chemical equation(1) compound of this case concretely.

D. The specifications of the invention of this case states that "this invention is related to a nerve-protecting cromanol compound of the chemical equation(1) which possesses the property of exceptional oral activity." By introducing the methods (Schmidt, etc.) of specifying an activity of the chemical equation(1) compound of this case in case of oral-taking, and the reference materials as to such methods, it is also stated that "the following nature of the chemical equation(1) compound is unexpectedly discovered: the chemical equation(1) compound is more effective, when taken orally, than any other compounds referred to as the U.S. Patent No.07/916.130(the U.S. Patents corresponding to the Cited invention)."

E. The evidence Gab No.6, which was submitted after the patent application date of the invention of this case, contained data comparing the activity of the chemical equation(1) compound of this case with that of the Cited invention in case of oral-taking. The data was obtained under the measurement method described in the specifications, showing that the chemical equation(1) compound of this case was 10 times more active in case of oral-taking, than the implementation example No.3 compound of the Cited invention. The superior oral activity of the chemical equation(1) compound of this case, as stated in the evidence Gab No.6, is attributable to the unique structural difference such that the chemical equation(1) compound of this case replaces a substituent Z1 with F, while the implementation example No.3 compound of the Cited invention replaces a substituent Z1 with H, since, otherwise, both compounds share the same structure of the general formula(1). Further, since the whole chemical compounds in other implementation examples of the Cited invention replace a substituent Z1 with H like the example No.3 compound, it can be anticipated that the chemical equation(1) compound of this case is superior to other chemical compounds in the implementation examples of the Cited invention like the example No.3 with regard to oral activities.

F. In conclusion, the patent-applied invention of this case and the Cited invention both are related to chemical compounds having the nerve-protecting function useful for treating degenerative CNS(central nervous system) diseases. and, the specifications of the patent-applied invention of this case explicitly stated its invention's superior effectiveness compared with that of the Cited invention, and the oral activity of the chemical equation(1) compound of this case is acknowledged to be 10 times superior to that of the chemical compound of the Cited invention according to the evidence Gab No.6. Thus, the chemical compound of the patent-applied invention of this case is acknowledged as having demonstrated conspicuousness of its effect compared to the Cited invention's chemical compound.

G. Therefore, the Claim No. 1 invention of this case is acknowledged as having demonstrated its progressivity, and accordingly, the patent claims Nos. 2∼4, 17 of the invention of this case must have progressivity since they are obtained from specifying the chemical compound of Claim No. 1 invention.

2. The Decision of the Supreme Court

A. The so-called selective invention means an invention which states the element of the preceding or already publicized invention as its super ordinate concept and whose elements entirely or partly consist of subordinate concepts derived from the above super ordinate concept. A patent can be granted to a selective invention on the condition that first, a preceding invention has not yet disclosed subordinate concepts comprizing a selective invention in concrete; second, subordinate concepts possess effects different in quality from the preceding invention, or if not, at least, there exist conspicuous differences in effect as measured quantitatively between them. In this case, it is enough that the specifications of a selective invention state explicitly the above mentioned kinds of effects compared to the preceding invention, and the results of comparative experiments verifying conspicuousness of its effects in concrete need not be stated, and if suspicions as to its effects are raised, an applicant for a patent may allege and prove its effects after the date of patent application by means of submitting specific comparative experimental data, etc.

B. In light of the above principles, it is justified for the court below to acknowledge the novelty of the patent applied invention of this case, and thereafter, admit the evidence Gab No.6 in order to find conspicuousness of its effects in its trial ∙ determination, which was submitted as a proof of conspicuousness of its effects.

C. But, the Claim No. 1 invention of this case includes (3R,4S)-3-[4-(4-fluorophenyl)-4-hydroxy-piperidine-1-yl]-croman-4,7-diol compound{the chemical equation (II) in the below}, (+)(3R,4S)- 3- [4- (4- fluorophenyl)-4-hydroxy-piperidine-1-yl]-croman-4,7-diol compound {the chemical equation(III) in the below}, (-)(3S,4R)-3- [4- (4-Fluorophenyl)- 4- hydroxy-piperidine-1-yl] -croman-4,7-diol compound{the chemical equation(IV) in the below}and its entire array of pharmaceutically derivable salts {On the other hand, it was an obvious error to state the chemical equation(I) as the general formula of the Claim No. 1 invention of this case in the specifications of the patent applied invention of this case since the chemical equation(III) in the below is identical to the chemical equation(I) in the above. It was an error that the court below nonetheless found that the chemical equation(I) represented the whole chemical compounds in the Claim No. 1 invention of this case}, and since the patent claim No.2, No.3, No.4 and No.17 respectively states as its claim the chemical equation(II) compound, the chemical equation(III) compound, the chemical equation(IV) compound and tartarate ethanolrate hydrate of the chemical equation(I) compound, thus, the entire patent applied invention of this case can obtain a patent if at least all of the chemical equation(II) compound, chemical equation(III) compound, and chemical equation(IV) compound show conspicuous effects compared to the Cited invention.

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Chemical Equation(II)

Chemical Equation(III)		Chemical Equation(IV)

D. However, according to the records, the evidence Gab No.6 contains comparative experiments data between the chemical equation(III) compound and the similarly structured compound derived from the selective invention, not the whole patent applied invention of this case. The patent applied invention of this case in its specifications states that "a desirable chemical compound from the patent applied invention of this case is (±) cis {indicates a chemical equation(III) compound as racemic body} as well as (+) cis isomer {indicates a chemical equation(III) compound}, and an especially desirable chemical compound is (+)(3R,4S)-3-[4-(4-fluorophenyl)-4-hydroxy-piperidine-1-yl]-croman-4,7-diol tartarate ethanolrate hydrate, and thereby, excludes from desirable chemical compounds a chemical equation(IV) compound, which is an optical isomer of chemical equation(III) compound and derivable from the patent applied invention of this case. It is obviously clear that the chemical compound(IV) among chemical compounds of the patent applied invention of this case can be less effective than other chemical compounds since excellence of optical activity of one optical isomer cannot guarantee that of the other optical isomer, and rather, the other optical isomer could have an inferior optical activity or negative side-effects from the pharmaceutical perspective. Therefore, it is hard to acknowledge the effect of chemical equation(IV) compound merely based on the evidence Gab No.6, which shows the results of comparative experiments as to the chemical equation(III) compound. Nonetheless, the court below acknowledged the effect as to the entirety of the patent applied invention of this case based upon results of comparative experiments of chemical equation(III) compound, which is stated as having excellent effects in the specifications of the invention of this case. In rendering such a decision, the court below erred by not fully comprehending the contents of the invention of this case, and by misunderstanding legal principles as to the standards of selective invention's effect, which affected the conclusion of the judgment of this case. The ground for appeal pointing this out is justified.

3. Therefore, the judgment of the court below is reversed without reviewing the remaining grounds for appeal, and the case is remanded to the court below for further trial ∙ determination. And it is so decided as per Disposition by the assent of all of the Justices who heard the case.

Source

• Supreme Court Decision 2001Hu2740 Delivered on April 25, 2003, Supreme Court Library of Korea