Our patent attorneys, Masahiro Nanjo and Ayako Seta, have received a favorable decision at the Supreme Court in the case pertaining to the invalidation trial request against Japanese Patent No. 3,068,858.

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In collaboration with other attorneys, our patent attorneys, Masahiro Nanjo and Ayako Seta, has been representing the patent holders in the case pertaining to the invalidation trial request against Japanese Patent No. 3,068,858. This patent covers the commercial pharmaceutical product.

The Intellectual Property High Court had issued a decision (2017 (Gyo-ke) 10003; November 21, 2017) to revoke the Japanese Patent Office’s decision rejecting the request for invalidation trial (Invalidation No. 2011-800018) against the above-mentioned patent. However, the 3rd Petty Bench of the Supreme Court rescinded this decision from the Intellectual Property High Court and ordered the case to be remanded for further consideration (2018 (Gyo-hi) 69; August 27, 2019).

This is the very first case ever that Supreme court of Japan ever reviewed inventive step requirement.

In the judgement, Supreme court reviewed the standard of “unexpected effect” to establish the inventive step which the patent holder argued and decided that the reasoning by the Intellectual Property High Court is not sufficient to deny the inventive step.

The case will be further examined by the intellectual high court but it is likely that the intellectual property high court will decide in favor of the patent holder because the Supreme Court decision is legally binding.

In this litigation, patent holder submitted the legal opinions from various IP experts including Mr. Tamai, professor of IP law at the University of Tokyo, Mr. Maeda, professor of IP law at University of Kobe, Mr. Iimura, a former Intellectual Property High Court judge, and Mr. Shimizu, a former Intellectual Property High Court judge.