CONTENTS
- 1. Patent Litigation, a Case in Which the Scope of the Patent's Limitations on the Core Technology Was at Issue
- - Patent Litigation, the Korean Intellectual Property Office's Determination
- 2. Patent Litigation, the Extinguishment of the Patent Confirmed by G's Withdrawal of the Suit
- 3. Patent Litigation, Daeryun's Strategy?
1. Patent Litigation, a Case in Which the Scope of the Patent's Limitations on the Core Technology Was at Issue
This case concerned the scope of the patent's limitations on the core technology in a patent litigation.
In February 2021, G, a domestic pharmaceutical company, filed a patent application for a "sustained-release pharmaceutical composition containing a GLP-1 analogue" (No. 2375262).
A GLP-1 analogue is an analogue of a hormone that helps promote insulin secretion and suppress appetite. It is also well known as the active ingredient of the U.S. obesity treatment drug "Wegovy," and the patent covered a method of manufacturing a semaglutide-based long-acting obesity treatment drug.
However, the Korean Intellectual Property Office cancelled the registration on the ground that the scope of the patent's limitations was excessive. G subsequently contested the cancellation decision and filed a suit with the Patent Court, but ultimately withdrew the suit, and the patent was thereby extinguished.
Meanwhile, P, a venture company specializing in peptides, filed a patent invalidation trial against G in November 2023, but the petition was rejected because G's patent had been extinguished.
Patent Litigation, the Korean Intellectual Property Office's Determination
The patent applied for by G related to a pharmaceutical composition containing a GLP-1 analogue, such as semaglutide, in the form of sustained-release microspheres, and it was an important technology for the development of diabetes and obesity treatment drugs.
However, the Korean Intellectual Property Office decided to cancel the patent on the grounds of a lack of novelty, a lack of an inventive step, and the excessive breadth of the patent claims.
The Korean Intellectual Property Office noted that the patent was not substantially distinguished from already known technology (the prior art). It determined that G's patent was drafted too broadly and that its scope of technical exclusivity was unreasonable.
For a patent to be registered, the invention must have novelty that clearly distinguishes it from existing technology, but the Korean Intellectual Property Office determined that this invention did not differ significantly from existing GLP-1 analogue-based compositions.
It also found that G's invention was merely a simple application of existing technology and was difficult to recognize as a technical advance.
Stating that sustained-release microsphere technology was already widely used in the relevant field and that merely combining it with a GLP-1 analogue made it difficult to recognize an inventive step, the Korean Intellectual Property Office noted that G's patent was too comprehensive and broad.
2. Patent Litigation, the Extinguishment of the Patent Confirmed by G's Withdrawal of the Suit
Regarding the judgment in the patent litigation, G appealed to the Patent Court, but as it voluntarily withdrew the suit, the Korean Intellectual Property Office's cancellation ruling became final.
G stated that the withdrawal of the suit was a broad-minded decision intended to grow the market for sustained-release microsphere-based long-acting drugs, but it also appeared that its plan to list on the KOSDAQ market through a technology-based special listing might be disrupted.
However, in an interview, G's representative stated that there would be no impact from the extinguishment of the patent, that the company planned to register additional patents, and that it would apply for listing during February.
For P, which had filed an invalidation trial against G's patent in November 2023, the petition itself was rejected because of the extinguishment of the patent resulting from G's withdrawal of the suit.
3. Patent Litigation, Daeryun's Strategy?
The reason a specialized law firm is needed in patent litigation is that patent technology is at the core of a company's competitiveness.
Securing platform technology has a significant effect on a company's competitiveness.
This case once again highlights the effect that the competitiveness of patent technology has on a company's growth, and it is likely to remain a case suggesting that establishing an accurate patent strategy is more important than anything else.
Patent litigation is a field that requires both technical expertise and legal knowledge.
When applying for a patent, a strategy that sets an appropriate scope of rights and increases the likelihood of registration is very important.
An attorney experienced in these matters can analyze the possibility of conflict with existing patents in advance and present specific strategies for defending a patent against competitors or for invalidating one.
Daeryun Law Firm LLP, through coordination between its Medical and Pharmaceutical Group and its 🔗attorneys experienced in intellectual property matters, provides tailored response strategies for pharmaceutical and bio-related patent litigation.
