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IP Court Case Summary:H23 (gyoke) 10055: There is no inventive step because “new medicinal use” is not found in claimed invention.
On January 18, 2011, the Intellectual Property High Court (IP High Court) supported JPO board of appeal’s decision that there is no inventive step because “new medicinal use” is not found in claimed invention.
 
The invention at issue is related to “blood vessel aging inhibitor” which contains low molecular collagen with 3,000 MW. The origin of this inhibitor is “skin of cod or flatfish”, and the condition of the zymolysis is “at temperature of 40 centigrade for 20 minutes after pepsin is used as a degrading enzyme, and having adjusted to pH 1.5”. This inhibitor has an effect of “decreasing the thickness of blood vessel inner membrane” which is related to “atherosclerosis”.
 
Cited document mentioned “blood vessel aging inhibitor” which contains low molecular collagen with from 1,300 MW to 4,000MW. Cited document does not specify the origin of the collagen and the condition of the zymolysis. Cited document suggested that this “blood vessel aging inhibitor” has medicinal use as the prevention or treatment to the “arteriosclerosis”.
 
Defendant insisted that there is no inventive step because new medicinal use is not found in claimed invention. On the other hand, plaintiff emphasized the difference between “atherosclerosis” and “arteriosclerosis”, and insisted that the claimed invention has new medicinal use as “atherosclerosis”.
 
IP High Court mentioned that cited document suggested not only “hardness” but also “resilience” of blood vessel, and “resilience” is related to “atherosclerosis”. Therefore, IP High Court mentioned that cited document also includes the prevention or treatment to the “atherosclerosis”, and “decreasing the thickness of blood vessel inner membrane” is known as one of the symptom of “atherosclerosis”. Finally, IP High Court decided that claimed invention does not have “new medicinal use”, and supported JPO board of appeal’s decision.
 
http://www.ip.courts.go.jp/hanrei/pdf/20110119113538.pdf