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Lee&Ko Secures Preliminary Injunction For Patent Owner, Prompting Change in the Supreme Court’s Long-Established Rule On Selection Inventions
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| Seoul District Court ruled that, even when a compound patent constitutes a selection patent, if the prior genus invention covers an extensive range, inventiveness may be recognized solely based on constitutional difficulty as it is with regular inventions, and that the strict disclosure requirement for selection inventions need to be made flexible. |
On June 27, 2018, Lee&Ko successfully obtained a preliminary injunction against all forms of infringement of a patent related to the blockbuster product persuading the Seoul Central District Court to determine that the existing legal principles set by the Supreme Court regarding selection inventions should be interpreted with more flexibility.
The Supreme Court has long held that, where the prior art discloses a genus, the inventiveness of a selection invention directed to a species may only be upheld when the patent specification specifically discloses its qualitatively different or quantitatively remarkable effect over the prior genus invention. The Supreme Court has also required that the specification of a selection invention patent clearly describe its superior effects over the prior art, by providing either a description of qualitative differences or data supporting any quantitative advantages. Under this strict rule, the Court has invalidated compound patents covering blockbuster drugs such as finasteride for failure to disclose superior effects.
Lee&Ko successfully persuaded the Court to decide for the first time for any Korean court that the Supreme Court’s strict rule should not apply when a selection invention is not readily recognizable from the prior art. For those not-readily-recognizable selection inventions, inventiveness may be recognized solely based on the difficulty in conception or selection, and superior effects need not be disclosed in the specification. In this case, a patented invention was a compound covered by the prior art, which disclosed a wide range of compounds in Markush-type claims.
On that basis, the Court found the compound patent valid and issued a preliminary injunction prohibiting the launch of generics by six generic manufacturers named as respondents, after approximately three months of intensive review from the petition date.
This decision is expected to have a significant impact in the pharmaceutical field as the Court ruled that the inventiveness of selection inventions may be recognized solely based on constitutional difficulty as it is with regular inventions, modifying the Supreme Court’s long-established strict rule on selection inventions.
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