Cases Update

摘要

The IP High Court of Japan held a patent directed to a nucleic acid synthesis method, obtained by Eiken Kagaku Co. Ltd., one of the major biotechnology companies in Japan, is to be partially invalidated as being identical to a prior application filed in Japan, although such a prior application has failed to explicitly disclose the patented method in issue. Eiken has filed and obtained a patent directed to a method for the amplification of a nucleic acid. Dnaform, also a Japanese biotechnology company, challenged this patent as being not enabled under Art. 36 (4) (i) of the Japanese Patent Act and identical to a prior application filed in Japan, which was published after the filing date of the patent in issue under Art. 29~(bis) of the Japanese Patent Act. With respect to the enablement requirement, upon judging an invention of a method, the Court held that in order that the enablement requirement and the sufficiency of support are satisfied, specific description to 'use,' or carry out the method, or equivalent, thereto in view of the common general knowledge in the art, must be described in the specification.