September 14, 2020
IP High Court Decision on Support Requirement in "Formulation of Boronic Acid Compounds" Case
The Intellectual Property High Court (IP High Court) handed down a decision on July 2, 2020, i.e., Appeal Case Nos. 2020 (Gyo-ke) 10159 (Case A) and 2020 (Gyo-ke) 10153 (Case B), in which rescission of a JPO decision to invalidate a patent in the name of the United States of America based on lack-of-support (Patent Law, Article 36, paragraph 6, item 1) was sought. In the decision, the IP High Court held that “the support requirement is satisfied so long as a person skilled in the art who read the specification would reasonably understand that the claimed invention is described in the specification, and with regard to the problem to be solved, would have a reasonable expectation that the problem can be solved by taking common technical knowledge into account”, and overturned the JPO’s decision. This ruling is favorable to patentees, since it may ease the current strict practice regarding the support requirement, and may also affect the patent examination process carried out by the JPO. This article summarizes the IP High Court rulings of this case.