“페닐 카르바메이트” 사건에 대하여

A Case Study Regarding PTO Appeal Board Case No. 2013Dang723, Patent Court Case No. 2014HUR577, and Supreme Court Case No. 2014HU2702 for Invalidation of “(S)-[N-ethyl-3-[(1-dimethylamino)ethyl]-N-methyl- phenylcarbamate] enantiomer ”

Korean Patent No. 121596 was requested to invalidate. The claim of the patent reads: A systemic transdermal pharmaceutical composition comprising a therapeuticallly effective amount of (S)-N-ethyl-3- [(1-dimethylamino)ethyl]-Nmethyl-phenylcarbamate enantiomer of formula I substantially free of its (R) isomer in free base or pharmaceutically acceptable acid addition salt form, and a pharmaceutically acceptable carrier therefor suitable for systemic transdermal administration: The PTO Appeal Board decided that the claimed invention has inventiveness since the systemic transdermal administration has an unexpected effect of the composition. However, the Patent Court reversed the PTO’s decision under the ground that the systematic transdermal administration can be easily carried out by an ordinarily skilled person in the art. However, the Supreme Court reversed the Patent Court’s decision, reasoning that the systemic transdermal administration of the composition has an unexpected effect of the composition. The claimed invention relates to a pharmaceutical composition but not a method. Transdermal administration is a kind of action which cannot be a constituent of a product claim, but can be a constituent of a method claim. How can they decide inventiveness of an action in a product claim? This is another awful decision held by the Korean Supreme Court.