Novelty Determination for an Enantiomer Invention as a Selection Invention

This paper suggests better jurisprudence on novelty determination of an enantiomer invention, which is a type of selection invention. For the suggestion, it first crafts an upgraded definition of a selection invention and then analyzes standards of novelty determination of selection invention and enantiomer invention in the U.S.A, Europe, Japan and Korea. Based on such analysis, this paper proclaims new standards of novelty determination of enantiomer invention as follows: (1) express disclosure requirement must be case-by-case determined on whether resolution method from racemate to enantiomer at issue was specifically disclosed; (2) enabling requirement of prior art must be separately and additionally determined; (3) in determining express disclosure requirement, the concept of skilled person must not be applied and only single prior must be compared; and (4) determination of enabling requirement must be based on the skilled person's own knowledge. As a conclusion, this paper claims that such law which fundamentally denies novelty of an enantiomer invention is not appropriate and that we should induce relevant research and development activities by establishing a proper inventive step standard