2023 (Ne) 10086 [5-Aminolevulinic Acid Phosphate] <Miyasaka>
更新日：3 日前
Article information
Article type: Case note
Category: Patents
Topics: Inventive step, Novelty, Creators and inventors
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2024-10-16 (Japan time). Full English translation.
2023 (Ne) 10086 [5-Aminolevulinic Acid Phosphate] <Miyasaka>
*Even if a substance's name appears in a cited reference, disclosure is not recognized unless a person skilled in the art can practice it without trial and error.
⇒ Novelty and inventive step: satisfied
“For a person who invents a manufacturing method or the like after the patent application, interests are adjusted with those of the patentee through an award establishing a nonexclusive license (Article 92 of the same Act).”
(Excerpts from the court's reasoning)
The appellant argues that, for a substance-patent invention whose compound is expressly identified in a publicly available reference and whose technical significance lies in having made the compound for the first time, the compound itself is publicly known, so the invention should be deemed to lack novelty. Alternatively, if it has novelty, because its technical significance lies in having made the compound, its technical scope should be limited to products made by the manufacturing method actually invented by the inventor or to isolated high-purity compounds. However, this cannot be accepted for the following reasons.
A. Given that an invention is a creation of a technical idea (see Patent Act Article 2(1)), for a product invention to be described in a publication distributed before filing (Article 29(1)(iii)), the publication must disclose not only the invention's configuration but also its technical idea sufficiently for a person skilled in the art encountering it to implement that idea based on common general technical knowledge at filing without exercising creative ability through thought, trial and error, or the like.
Particularly where the product is a new chemical substance, finding a manufacturing method or other means of obtaining it is often difficult. Thus, for the technical idea to be disclosed in a publication, generally the publication must not merely disclose the substance's constitution but describe enough to permit understanding of its manufacturing method. Where it does not, a person skilled in the art encountering the publication must be able to discover a manufacturing method or other means of obtaining it based on common general technical knowledge at filing, without exercising creative ability through thought, trial and error, or the like.
Here, the cited reference, a publicly available publication, contains no description of a manufacturing method for 5-aminolevulinic acid phosphate. Nor do the papers in Exhibits Otsu 16–18 establish that a person skilled in the art could have found a manufacturing method or other means of obtaining it based on common general technical knowledge at filing. (The foregoing is the same as Part 3, 3(1)B of the “Facts and Reasons” in the original judgment [p. 14 onward].)
B. By contrast, the specification not only discloses the constitution of 5-aminolevulinic acid phosphate ([0009], [0014]–[0016]) but also contains sufficient description for a person skilled in the art to understand its manufacturing method ([0007], [0019]–[0028], [0034]–[0036]). This discloses the technical idea of the invention, an invention of a new chemical substance, sufficiently for a person skilled in the art to practice it; its technical significance is not limited to a mere manufacturing method.
Where a patent is granted for a product invention, the patent right extends to any product identical in structure, characteristics, and the like, regardless of its manufacturing method (see Supreme Court, Second Petty Bench, June 5, 2015, 2012 (Ju) 1204, Minshu Vol. 69 No. 4, p. 700).
C. For persons who were manufacturing or otherwise practicing at the time of the patent application, as the appellant points out, adjustment of interests with the patentee is achieved through a nonexclusive license by prior use (Patent Act Article 79). For persons who invent a manufacturing method or the like after the application, it is achieved through an award establishing a nonexclusive license (Article 92).
Update history
The first-published date remains unchanged. Display maintenance, classification changes, related-article updates, and text corrections are recorded separately.
November 1, 2026: First published on this website.
November 2, 2026: Added article information, classification, topics, language navigation, related articles where the same case was confirmed, consultation guidance, and SEO. The original text and first-published date were preserved.
