Protection of New use Invention Novelty

The Japan’s High Court overturned an appeal decision by the Japanese Patent Office (JPO) that an invention relating to cosmetics based on the finding of a new use for a known substance has no novelty and is not patentable under Article 29(1)(iii) of the Japanese Patent Law because the application of the whitening cosmetic composition on to the skin can provide the skin not only with a whitening effect but also with a wrinkle suppressing effects inherently or potentially. The JPO further states that if invention “cosmetic composition for preserving skin humidity” is known in the art, invention “cosmetic composition for suppressing skin wrinkle formation” lacks novelty, even if the suppression of wrinkle formation is a novel or unknown property discovered by the inventor of invention because both the inventions fall within the same applicable scope and do not differ as in the case of medical or pharmaceutical fields which invention is distinguished from known use of the known substance with respect to the diseases to be treated..

The grounds on which the JPO appeal decision was overturned by the IP High Court are as follows:

The effects on wrinkle differ from the skin darkening or pigmentation effects in view of the phenomenon occurring in the body and the generating mechanism.

While there are some common therapeutic methods effective in preventing or treating both wrinkle formation and skin darkening or pigmentation, there are also many separate therapeutic methods for these conditions.
Cosmetics for whitening are distinguishable from the cosmetics for anti-aging, including wrinkle suppression in view of the different types of products.
It cannot be considered that one skilled in the art could not be effective against wrinkles and the present invention provides for a new use as a wrinkle suppression formula, which is different from its use.

In view of the above decision of the IP High Court, the applications for new use of the known substance in the cosmetics and food fields will be accepted for registration.

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Protection of New use Invention Novelty – Japan