Written by Ms. Xiao Han of Chofn IP

Edited by Mr. Hui Wang and Ms. Ming Liu of Chofn IP 

Case 1: Can indications and contraindications recorded on the medicine container limit the scope of protection?

The claims of the patentee's patent include the label and insert of the medicine container, which record cancers that can be treated by the drug and contraindications that the drug cannot be administrated with another drug. The court held that the content recorded on the label and the insert could not be used as a distinguishing technical feature and could not limit the scope of protection of the patent. The court asserted that the product claims shown in the drawings could have a substantial limiting effect only when they reflected structural and composition characteristics of the product.

This reminds the inventors of chemical medicines that when drafting claims, they need to think more about what can be protected by the patent law. 

Case 2: What requirements should the inventive step of a patent for medical use meet?

The inventor held a patent for the medical use of compound A in the treatment of gastric cancer. The challenger submitted a document of "The Lancet", which mentioned that the traditional therapy had a poor treatment effect on gastric cancer and early results of the compound in the treatment of gastric cancer were very exciting. However, no specific test data was provided. The court held that the two points mentioned in "The Lancet" gave researchers sufficient motivation to try new treatments and certain expectations of success. Therefore, the patent does not possess inventive step and should be invalidated.

For determining inventive step of inventions for medical uses, on one hand, it is necessary to consider whether the person skilled in the art will try to use a known substance to treat a disease, and on the other hand, whether the person skilled in the art will have reasonable, if not absolute, expectations of success on such treatment.

Report on Trial of Chemical Drug Patent Cases by Beijing Intellectual Property Court (1)

Report on Trial of Chemical Drug Patent Cases by Beijing Intellectual Property Court (2)

Report on Trial of Chemical Drug Patent Cases by Beijing Intellectual Property Court (4)