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The criteria for the identity of inventions are critical for the assessment of novelty, inventive step, and the priority of inventions. Identity of inventions is determined by comparing the restrictive elements of inventions at hand. No difference between the elements of the inventions is interpreted as the identity of the inventions. Where the difference is estimated to be non-substantial, however, two inventions can also be declared to be substantially identical. A species invention can also be identical to a genus invention, which results into a well-known maxim: a species anticipates a genus. This paper critically addresses the criteria for the identity of two inventions, with focus on the notion of substantial identity and identity between genus- and species-inventions. The maxim, “a species anticipates a genus”, seems to have been deduced from the well-known principle: “That which infringes, if later, would anticipate, if earlier.” The principle, however, was coined before the notion of inventive step was developed apart from novelty requirement. Now with the notion of inventive step, something infringes, if later, dose not always anticipate, if earlier. Furthermore, identity of inventions must be determined by the criterion whether the invention as an idea exists within the public domain. A species-invention itself does not always fully represent a genus-invention. Therefore the generally accepted notion of identity for the species- and genus-inventions does not seem to be plausible anymore. The notion of substantial identity for the assessment of novelty is not compatible with the notion of inventive step. It should be discarded and substituted by the notion of inventive step. Substantial identity for the assessment of priority of inventions should also be abandoned, for this does not have a firm legal basis. In the long term, however, test of inventive step is preferred during the assessment of priority of inventions, with accompanying amendment of the Patent Act.
When an article is purchased and used by the purchaser, the patent right is generally interpreted to be exhausted by the first-sale. This kind of interpretation is more or less the same throughout the world. When the purchased product is modified beforehand to be used, the use of the product may be prohibited depending on the extent of the modification. The legal framework for the distinction, however, is not the same throughout the representative countries such as Korea, Japan, and the United States. In Korea, framework of make/use is adopted for the analysis. When the modification is legally estimated to be a use of the product, the use of the product is allowed when the modification is legally estimated to be a make of the product, the use of the patented article is prohibited. In the United States, however, a different framework is adopted for the analysis: permissible-repair/prohibited-reproduction. Japan distinguishes itself among the countries to use a framework of exhaustion/nonexhaustion criterion. This paper critically reviews representative precedents in each of the countries regarding patent infringement by the use of a patented article accompanied by the modification of the article. The frameworks of the countries are analysed and compared with other frameworks. The frameworks of Korea and the United States are estimated to be basically compatible to each other albeit the minute differences in the criteria for the distinction. Japan’s exhaustion/non-exhaustion framework is regarded to be more basic than those in other countries. But one of the two criteria specifying the case when the patent right is not exhausted is not deemed to be precise enough to be applied without ambiguity especially to the expendable articles.
Monocid® (cefonicid) is a new second-generation cephalosporin with a prolonged half-life which can offer a numerous therapeutic advantages as prophylactic antibiotics in plastic and reconstructive Surgery. Prospective comparative study using monocid and cefotiam for prophylaxis against postopertive wound infection was carried out in each 30 patients (total 60) undergoing plastic and reconstructive surgery. Monocid, which has an extended serum half-life, was administered once daily, while cefotiam was given every six hours. No evidence of postoperative wound infection was observed in any of the patients who met the criteria for evaluation. Adverse reaction consisted mainly of infrequent gastrointestinal symptom and laboratory abnormalities was not observed in this study. No differences between the two regimens were found with respect to safety or efficacy in the prevention of postopertive infection in elective and emergency plastic and reconstructive surgical procedures. The effectiveness of once-daily administration should make mononcid a highly cost-effective alternative lo many of the other expensive cephalosporin.