Grand Panel (2016(Gyo-Ke)10182)

[Title of the case] Litigation seeking rescission of the JPO decision of dismissal of motion to invalidation of a patent covering a pharmaceutical compound.

[Key issue] Inventive step and the legal interest for filing a litigation against a JPO decision

This is Grand Panel case.  The IP High Court stated in the judgement:

(i)the legal interest for filing litigation against a JPO’s invalidation-trial decision would not be lost even after the expiration of the patent right unless there is a special circumstance.

(ii)if a cited invention alleged is indicated by a general formula covering an enormous number of compounds, such an invention cannot be recognized as a cited invention, since it is impossible to derive a technical concept specifically relating to a compound unless there is any reason to preferentially or positively select the technical concept.