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IP Court Case Summary:H22 (gyoke) 10249: 

On April 7, 2011, the Intellectual Property High Court (IP High Court) reversed JPO board of appeal’s decision that the patented invention is not satisfied with the requirement of enablement.

The invention at issue is related to “the method to inhibit the degradation of the composition in the presence of fluoroether composition and Lewis acid”.

According to the invention, the degradation of sevoflurane into resolution products such as the hydrofluoric acid by Lewis acid is inhibited, and an anesthetic composition becomes stable. However, JPO board of appeal decided that it is not described definitely and enough.

The detailed description of the invention of the specification (corrected specification) describes as follows;
– Water is preferably used among medicines (Lewis acid inhibitor) which inhibits the degradation of sevoflurane by Lewis acid.
– The degradation of sevoflurane is inhibited according to the increase of the quantity of the water to add to sevoflurane.
– When the quantity of the water to add to sevoflurane is 206ppm or more, it can inhibit the degradation of sevoflurane.

IP High Court mentioned as follows;
– It is apparent that the anesthetic which includes sevoflurane as an active ingredient is considerably stable when it is kept and used in ordinary way.
– The water is well-known as an inhibitor of Lewis acid.
– It is easily understood that the degradation of sevoflurane is considerably inhibited by adding water to sevoflurane at less than 0.14% w/w more than 206ppm (0.14% w/w is concentration at the saturation.) in the method of preservation and usage which is usually expected in this kind of medicine.

Because of the reason above, IP High Court decided that the patented invention is satisfied with the requirement of enablement, and reversed JPO board of appeal’s decision.

http://www.ip.courts.go.jp/hanrei/pdf/20110411135336.pdf