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Newsletter | February 2014, Issue 1
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LITIGATION |
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Korean Patent Court Recognizes Protection of Use Patents |
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The Patent Court has recently upheld the validity of a patent directed towards the use of a pharmaceutical product for the first time. A “use” patent refers to a patent directed to a specific use of a certain product. Prior to this case, courts have applied relatively strict interpretations regarding the requirements for pharmaceutical product use patents, most of which were invalidated. |
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In the Patent Court decision, the court ruled that a patent cannot be invalidated for lacking inventiveness if a reasonable person skilled in the art will not likely accept the literal interpretation of a certain disclosure of the cited prior art reference in view of the overall intent and specific experimental data disclosed in that reference. In coming to this ruling, the Patent Court rejected the Plaintiff's argument that the claimed invention can be readily inferred from a particular portion of the cited prior art reference. As to the qualification as a prior art reference, there was a standard in Korea that a prior art reference containing some errors or insufficient descriptions in the experimental data or results can still serve as a basis in determining novelty and inventiveness if a person skilled in the art would have had no difficulty in understanding the overall technology and citing the reference as prior art. The Patent Court’s decision is significant in further developing the use patent standard by holding that, if the portion of the disclosure on which the analysis relies is different from the findings of the reference as a whole and the specific experimental results disclosed, then that portion of the reference cannot be used to deny inventiveness of the claimed use invention. |
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In a related matter, a separate infringement action was filed that sought preliminary injunction for the same patent. The court in that case rejected the defendant’s abuse of right or public domain arguments. Specifically, the court ruled that where a patent may be subject to partial invalidation, the invalidation grounds can be remedied by a correction procedure and any argument based on such invalidation grounds will not be considered, even if the correction is yet to be confirmed. This was the first case to address the issue on whether an abuse of right or public domain defense in a patent infringement action can be overcome by plaintiff’s argument that a petition for correction would remedy the grounds for invalidation and the defendant’s invention falls within the scope of protection provided to the patent holder, even if no final decision on the correction was issued. |
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Kim & Chang successfully obtained favorable decisions in the above cases by developing the relevant legal principles through careful analysis of the facts and relevant documents, and contributed to shaping the first case protecting medicinal use patents. |
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