Kim & Chang’s Intellectual Property Practice successfully defended the validity of three agrochemical crystalline form patents (the “Subject Patents”) in the Intellectual Property High Court (the “IP High Court”) inter partes appeal cases, overturning the Intellectual Property Trial and Appeal Board’s (the “IPTAB”) invalidation decisions.

After closely reviewing a recent Supreme Court precedent that establishes a new standard for assessing the inventiveness of crystalline form inventions, our firm successfully argued that the Subject Patents are not different from the patent in the precedent and should be considered inventive under the new standard. This led to the IP High Court’s decisions that reversed the IPTAB’s rulings. In these cases, the IPTAB denied the inventiveness of the Subject Patents based on a strict standard that requires a qualitative or quantitative difference in effects compared to prior art compounds. We filed appeals and presented evidence, including technical documents, expert affidavits and experimental data, to demonstrate that the Subject Patents meet the new standard. Additionally, we submitted other cases where inventiveness in crystalline form inventions was recognized.

In the case of a crystalline form invention whose subject matter is a specific crystalline form, which differs from a previously known compound only in terms of crystalline form, a very strict standard for assessing inventiveness has been applied. Under this standard, the inventiveness of a crystalline form invention is recognized only when it has an effect that is qualitatively different from or quantitatively remarkable over that of the compound disclosed in the prior art on the premise that constitutional difficulty of the crystalline form invention is generally not recognized. In the present cases, the IPTAB rendered decisions to deny the inventiveness of the Subject Patents in accordance with the strict standard mentioned above, and the patentee filed appeals against the IPTAB’s decisions with the IP High Court.

After the appeals were filed, the Supreme Court presented, in an ex parte appeal case relating to a crystalline form invention, a new standard that the inventiveness of a crystalline form invention should be determined in accordance with the general standard (difficulty in constitution and remarkableness of effect). We argued and proved that the patents meet the new inventiveness standard set by the Supreme Court. The IP High Court ruled in our favor, recognizing the inventiveness of the patents and rejecting all other invalidation grounds.

These decisions are significant as they are the first to apply the new standard in inter partes cases. We obtained favorable outcomes in these cases through our experience, analysis of various cases, logical arguments and use of the latest Supreme Court precedent.