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A use patent of Viagra is decided to be invalid…generic drugs of Viagra seem to burst out (News Letter No. 242)



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1. A use patent of Viagra is decided to be invalid…generic drugs of
Viagra seem to burst out

- The Korean Intellectual Property Tribunal (KIPT) decided that the use patent of Viagra, an erectile-dysfunction drug, is invalid

The use patent of sildenafil, which is the main ingredient of Viagra to treat erectile-dysfunction, is invalid.

In the decision of a trial for invalidation of the use patent (Patent No. 262926) of Viagra (main ingredient: sildenafil) to treat erectile-dysfunction manufactured by Pfizer (patentee) which is a multinational drug manufacturing company, KIPT under the Korea Intellectual Property Office (KIPO) stated that the use patent of Viagra be invalid, accepting the invalidation argument of CJ CheilJedang Corp. and Hanmi Pharm Co., Ltd. which are the plaintiffs in the trial.

As the patentee of the product patent of sildenafil (main ingredient of Viagra) and the use patent for treating erectile-dysfunction, Pfizer has sold Viagra exclusively.
Although the period of the product patent right expired on May 17, 2012, the period of the use patent of Viagra to treat erectile-dysfunction will expire on May 13, 2014. Therefore, Pfizer still has the exclusive right of Viagra to treat erectile-dysfunction.

A product patent is given to a new substance itself such as a compound. Pfizer developed sildenafil as a drug for angina patients in the early 1990’s and obtained a product patent thereof. (Korean Registration Date: November 7, 1994)

When a new use of a certain substance is found, a use patent is given to the use of the substance. Pfizer found that sildenafil was useful in treating erectile-dysfunction during the clinical tests and obtained the use patent thereof by defining the use of treating erectile-dysfunction (Korean Registration Date: May 9, 2000), separately from the product patent.

The use patent of Viagra to treat erectile-dysfunction was the biggest obstacle to Korean pharmaceutical companies to release generic drugs of Viagra. So, the release of domestic generic drugs of Viagra is expected to gain momentum due to the KIPT’s decision.

The release of generic drugs of Viagra will greatly increase by the KIPT’s decision to invalidate the use patent.

About one (1) year is expected to pass to determined whether the use patent of Viagra is invalid or not.

At this time, although KIPT made the decision to invalidate the use of Viagra, since Pfizer which is the patentee of the use patent of Viagra to treat erectile-dysfunction may raise a trial to cancel the trial for invalidation before the Patent Court, it takes usually about one (1) year for the Patent Court and the Supreme Court to finally determine whether the use patent is invalid or not. Thus, the use patent of Viagra remains as an effective right of Pfizer.

2. Now, 3D in design applications is a general trend!

- The number of three dimensional (3D) design applications is greatly increasing every year

According to a record of use of the 3D design application filing system which is operated by KIPO for the first time in the world, the use of the system doubled every year after three (3) years of the introduction of the system, showing eye-opening growth.

The KIPO’s successful operation experience of the 3D design application filing system is raised as the benchmark for Patent Offices of the advanced countries, such as the USA, Japan, Europe, etc.

Under the 3D design application filing system, a 3D file modeling a product by using the computer graphic technology is submitted when filing an application for a design, instead of a drawing(s) or picture(s) of the product prepared on plane.

This system reflects the reality of the industrial fields where it is common for designers to design products in 3D, using the computer graphic technology. This system is operated to reduce an applicant’s cost and time by filing a computer file format itself, without preparing a 3D file of many drawings or pictures.

The number of the 3D design applications was only 786 in 2010 when the system was first operated. However, it was doubled to 1,569 in 2011 and was recorded as 877 by April 2012, showing a great increase in comparison with 491 during the same period of 2011.

KIPO plans to steadily improve the filing system by enhancing the performance of the 3D viewer, to make it easier to use the 3D design application filing system.

3. Multi-touch to conveniently use a smartphone

- The number of the applications for the multi-touch technology is increasing

As smart devices have become very popular, the number of patent applications for the multi-touch technology used for touch screens has rapidly increased.

According to the KIPO’s research of the number of the patent applications related to the multi-touch technology during the latest six (6) years (2006~2011), there was only 5 in 2006 but it continued increasing, reaching 122 a year on average during the last three (3) years (2009~2011).

By applicants, Korean companies filed the most applications with 309 (67.2%), followed by Korean individuals with 69 (14.6%), foreign companies with 47 (10.2%), Korean research institutes with 35 (7.6%) and foreign individuals with 2 (0.4%).

Notable is the fact that since the applications filed by the Korean individuals are 14.6% of a total of these applications, the importance thereof is relatively great in comparison with the other technological fields. With the boom of smart phones, the individuals’ interest in touch methods to which they usually easily access is considered as being connected to the filing of applications.

Among the Korean companies, LG Electronics filed the most applications with 99, followed by Samsung Electronics with 87 and LG Display with 16.

4. “3D printer” of printing everything imaginable!

According to KIPO, the number of the patent applications related to a 3D printer was only 19 until 2005. However, a total of 59 applications was filed during 2006~2011, continuing an increase.

In the early 2000s, a 3D printer was mainly used in simply making a model or sample of a product. However, as a variety of raw material substances have been developed, the application field of a 3D printer has expanded.

In the future, a 3D printer is not limited to the manufacturing of a simply commercial product. It is considered as having an important role in the maintenance of human health and life by being connected to many technologies, such as biotechnology, nanotechnology, etc. It is also regarded as being positively used in making a product to arouse one’s interest, such as a character in an animation or movie, or a product to reflect a consumer’s psychology preferring to a unique thing different from the others.

As each home has a printer these days, there will be a day to directly make and use a product in its own distinctive design using a 3D printer at each home in the near future. As well, the number of patent applications related to a 3D printer is expected to continuously increase henceforth.



The world’s patent examination information will be on-line confirmed (News Letter No. 243)


Intellectual Property (IP) Right Trend during the first quarter of 2012 (News Letter No. 241)