Intellectual Property Information

PATENTABILITY OF A THERAPEUTIC METHOD AND INDIRECT INFRINGEMENT

In our country, we often hear an argument supporting that the Japanese Patent Law should provide patent protection for medical treatment methods including methods of operations and therapeutics. This argument seems to be mainly based upon the following reasoning:

There is only a feeble ground for justifying to exclude a therapy not using a pharmaceutical from subject matters of patent protection under the Japanese Patent Law since pharmaceuticals are included in subject matters of patent protection.

On the other hand, in the United States, even if a novel use, e.g. "improvement of hair growth effect" is found in a known compound per se, it is impossible that the composition of this known product is deemed to be patentable as a product, "a hair growth tonic" for a secondary pharmaceutical use. However, it is possible that "a hair growth method" using such compound is deemed to be patentable because there is no provision to exclude a method of medical treatment from the scope of protection.

In this case, a user in general who purchased "the hair growth tonic" is not to be sued based on a claim directed to the method for improving "hair growth", but a drugstore or the like who has purchased "the hair growth tonic" is to be sued under the provision of contributory infringement defined in 35 U.S.C. §271. From this standpoint, it is very important to obtain patent protection for a therapeutic method.

Recently, the provision for indirect infringement in the Japanese Patent Law was revised to thus broaden the scope of its applicability. If a therapeutic method becomes a subject matter for patent protection in the future, it will become necessary to prepare claims in view of the scope of applicability of indirect infringement.