1. Outline of the case

 A plaintiff filed a request for an invalidation trial of Patent No. 2648897, title of which is “pyrimidine derivatives” (the subject patent) with JPO.

 JPO made a decision of failure in the invalidation trail requested by the plaintiff (appellant).

 Meanwhile, the plaintiff (appellant) filed an action for seeking revocation of said decision with the Intellectual Property High Court.

 The Intellectual Property High Court rejected plaintiff’s (appellant’s) request based on examination and judgement of Grand Panel (which consists of four (4) general judges of each department from Nos. 1 through 4 and one (1) senior judge).

 In this case, whether the patented invention has an inventive step or not is contested and it is determined in both the trial and the judicial decision that the invention claimed by the plaintiff as a cited invention could not be approved as the cited invention.

 The summary is shown below:

 Besides, the explanation of other issues (whether to be an interest of litigation and whether to be the violation of the support requirement) is left out. Further, although whether to have the inventive step is contested in the invention of the corrected claims 1, 2, 5, 9 to 12 of the subject patent, only the invention of claim 1 is explained as follows.

2. Subject Invention and Cited Inventions 1 and 2

(1) Subject Invention

 The corrected invention of claim 1 of the subject invention (Subject Invention 1) is as follows:

[Claim 1]

 A compound of the following formula, or a compound that is a ring-closing lactone body of the compound:

wherein

R1 is lower alkyl,

R2 is phenyl substituted with halogen,

R3 is lower alkyl,

R4 is hydrogen or calcium ion forming hemicalcium salt, and

X is imino group substituted with alkylsulfonyl group,

wherein a broken line shows whether to have a double bond.

(2) Cited Invention 1

Difference between Subject Invention 1 and Cited Invention 1

 X is the imino group substituted with the alkylsulfonyl group in Subject Invention 1, whereas, X is the imino group substituted with the methyl group.

(3) Cited Invention 2

3. 3. Plaintiff’s argument

 The difference between the compound of Cited Invention 1 and the one of the subject invention is only whether the substituent of N atom at the 2-position on pyrimidine ring is the methyl group or the methylsulfonyl group. Considering the general formula (I) of Cited Invention 2, it is easy to substitute the methyl group which is in either of the dimethylamino group at the 2-position on the pyrimidine ring of the compound of Cited Invention 1 with the methylsulfonyl group.

 Since the compound of Cited Invention 1 is involved in the general formula (I) of Cited Invention 2 as the HMG-CoA reductase inhibitor, there is enough motivation to consider Cited Invention 2 for the modification of the compound of Cited Invention 1. In the general formula (I) of Cited Invention 2, only six (6) groups (alkyl, aryl, aralkyl, acyl, alkylsulfonyl, arylsulfonyl) is described for the substituent of N atom of the dimethylamino group at the 2-position on the pyrimidine ring of the compound of Cited Invention 1, and it is extremely easy to select therefrom the methylsulfonyl group, which is the alkylsulfonyl group being hydrophilic and having smaller change in the size of the molecule than the methyl group.

4. Court’s decision

 In the invention claimed in a patent application (the subject invention), upon determination of inventive step (Patent Act Article 29 (2)), the invention satisfying each subparagraph of Article 29 (1) to be compared with the subject invention (hereinafter referred to as “Principle Cited Invention”) is usually related to the subject invention in the technical fields and is selected from the range where a person skilled in the art in said technical fields reviews.  “The invention described in publications” specified in subparagraph 3 of Article 29 (1) has to be the specific technical idea which can be taken from the description in said publications since it should be a foundation for determining whether a person skilled in the art could have easily created the subject invention based on the technical level at the time of the application.

 Furthermore, in the case where a compound is described in the form of a general formula in said publications and said general formula has a huge number of options, a person skilled in the art cannot take the specific technical idea regarding said particular options from the description in said publications unless there are any circumstances where the specific technical ideas relevant to the particular options should be selected proactively or preferentially.

 Thus, in a case where the invention claimed as the cited invention is “the invention described in publications” and the compound is described in the form of the general formula in said publications and said general formula has a huge number of options, it is appropriate to conclude that this could not be the cited invention since the specific technical idea regarding said particular options cannot be taken from the description unless there are any circumstances where the specific technical ideas relevant to the particular options should be selected proactively or preferentially.

 In a case where there is other “inventions described in publications” specified in subparagraph 3 of Article 29 (1) (hereinafter referred to as “Minor Cited Invention”) corresponding to the difference between the subject invention and Principle Cited Invention and when determining whether or not the subject invention has been easily created by applying Minor Cited Invention to Principle Cited Invention, the theory can also be applied to the case of concluding Minor Cited Invention from publications.

 In the subject case, Cited Invention 2 has the description of “-NR4R5” as an option of substituent R3 at the 2-position on pyrimidine ring of “especially preferred compound” in the compounds shown in the general formula (I) of Cited Invention 2 as well as the one of “methyl group” and “alkylsulfonyl group” as an option of R4 and R5.

 However, the number of options for R3 regarding “especially preferred compound” described in Cited Invention 2 is extremely huge, so that the selection of “-NR4R5” for R3 and “methyl” and “alkylsulfonyl” for R4 and R5 respectively is one option among more than twenty million (20,000,000) options.

 Further, although Cited Invention 2 has the descriptions of not only “especially preferred compound” but also “especially and extremely preferred compound”, “-NR4R5” is not described therein as the option for R3.

 In that case, even though alkylsulfonyl group is described in Cited Invention 2, a person skilled in the art cannot find any circumstances to proactively or preferentially select “-NR4R5” as R3 of the general formula (I) of Demandant 2 and it is difficult to find the circumstances to select “methyl” and “alkylsulfonyl” as the option for R4 and R5 in addition to the selection of “-NR4R5”.

 Accordingly, it is not possible to evaluate that the technical idea such that the group at the 2-position on pyrimidine ring should be “-N(CH3)(SO2R’)” can be taken from Cited Invention 2. Therefore, it cannot be said that the composition relevant to the difference is described in Cited Invention 2, so that it is not possible to lead to the composition relevant to the difference of the subject invention by combining Cited Inventions 1 and 2.

5. 5. Our comments

 The decision of this case shows a criterion of eligibility for a cited invention. In a case where the invention claimed as the cited invention is “the invention described in publications” and the compound is described in the form of the general formula in said publications and said general formula has a huge number of options, it is not possible to conclude that this could be the cited invention since the specific technical idea regarding the particular options from the description cannot be taken unless there are any circumstances where the specific technical ideas relevant to said particular options should be selected proactively or preferentially. Consequently, the eligibility of a cited invention should be carefully determined in consideration of suitable motivation in the event of taking the specific option from a huge number of options in the invention described in publications.  Also, since it is expected to accumulate more judicial precedents in order to determine the eligibility of a cited invention, it is important to take notice of the judicial precedents given in the future.

 It would be appreciated if you refer to this article when determining the inventive step in Japan.

 Should you have any question in detail, please feel free to let us know.