We successfully represented Rapigen Co., Ltd. in a utility model invalidation action concerning a COVID-19 in vitro diagnostic kit. In particular, in this case, the Supreme Court newly articulated the legal principle that the scope of the exception to loss of novelty for patents and utility models based on an applicant’s own disclosure must be determined according to the “identity of the invention/device,” which enabled us to obtain a ruling confirming the validity of Rapigen’s rights.
Rapigen is the holder of a utility model right for a “case for an in vitro diagnostic specimen filter,” a device applicable to in vitro diagnostic kits for human and veterinary use, including COVID-19 in vitro diagnostic kits. Before filing the utility model application, Rapigen claimed the exception to loss of novelty with respect to a “case for an in vitro diagnostic specimen filter” disclosed in one in vitro diagnostic kit. However, it did not separately claim the exception with respect to the same “case for an in vitro diagnostic specimen filter” included in another in vitro diagnostic kit. The opposing party therefore argued that the effect of the exception did not extend to the same “case for an in vitro diagnostic specimen filter” contained in the other diagnostic kit, and that the novelty of the utility model should accordingly be denied.
The Intellectual Property Trial and Appeal Board found that the utility model lacked novelty and was therefore invalid. Our firm focused on the fact that, although the Supreme Court had previously held that the scope of the exception to loss of novelty in design cases should be determined based on the “identity of the design,” it had not yet articulated a corresponding principle for patents. In particular, taking into account the legislative purpose of the exception to loss of novelty, we emphasized that:
(1) for patents as well, as with designs, the issue should be determined based on the “identity of the invention”;
(2) where an exception is claimed for the earliest disclosed invention, it is natural to interpret that claim as including an intention to claim the exception for later disclosures of the same invention as well, especially because disclosure of an invention is often expected to continue over a certain period of time; and
(3) through legislative amendments, the scope of the exception to loss of novelty has been continuously expanded, and the system has come to serve as a mechanism not only to protect inventors who may be unfamiliar with the patent system, but also to ensure effective protection of inventors’ rights.
The Patent Court accepted our arguments and revoked the decision of the Intellectual Property Trial and Appeal Board. The Supreme Court likewise accepted our position and held that even where a person entitled to obtain a patent has made multiple public disclosures and has claimed the exception only with respect to the earliest disclosed invention in accordance with the prescribed procedure, the effect of the exception extends to inventions that are recognized as identical to the earliest disclosed invention.
Through this decision, an appropriate standard consistent with the purpose of the statutory provisions has now been established for determining the scope of the exception to loss of novelty for patents and utility models, thereby enabling more effective protection of inventors’ and creators’ rights. In addition, Rapigen was able to preserve its utility model right for technology designed to enable rapid and accurate in vitro diagnosis in a wide range of in vitro diagnostic kits, including COVID-19 in vitro diagnostic kits.