[거절사정(특)][공2003.1.1.(169),102]
[1] The purport of Article 1(2) and (3) of the former Enforcement Decree of the Patent Act, and in a case where the starting micro-organism can be easily obtained by the party in the invention using the micro-organism, and the process of manufacturing the intermediate products or the final products can be easily reproduced by the party in the specification (negative)
[2] The case holding that the patent registration of an invention should not be refused because the vector pD11 or pBD, among microorganisms used in the patent application invention, was not deposited with the domestic depository designated by the Commissioner of the Korean Intellectual Property Office, and it could not be easily obtained at the time of the filing of the patent application
[1] Article 1(2) and (3) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199, Jul. 1, 1987) provides that any person who intends to file a patent application for an invention using a micro-organism shall deposit the micro-organism with a depository agency designated by the Commissioner of the Korean Intellectual Property Office and append documents certifying the deposit thereof to the application: Provided, That if the micro-organism can be easily obtained by a person who has ordinary knowledge in the technical field to which the micro-organism belongs, the deposit may not be made. The purport of this provision is that, unless the nature of the micro-organism existing in the extreme world is confirmed and it is guaranteed that the micro-organism can be obtained again, the invention cannot be used for industrial purposes. However, although the final or intermediate products are not deposited, if the micro-organism required in the process of producing it can easily be obtained by the manufacturer, and if the middle or final products produced by the micro-organism can not be easily described in the specifications or final products itself.
[2] The case holding that the patent registration of an invention should be refused because the vector pD11 or pBD, among microorganisms used in the patent application invention, was not deposited with the domestic depository designated by the Commissioner of the Korean Intellectual Property Office, and it could not be easily obtained at the time of the application for the patent application
[1] Article 1(2) and (3) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199, Jul. 1, 1987; see the main sentence of Article 2(1) and (3) (see the current proviso of Article 2(1)) / [2] Article 1(2) (see the main sentence of Article 2(1) and (3) (see the current proviso of Article 2(1)) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199, Jul. 1, 1987)
[1] Supreme Court Decision 88Hu42 delivered on August 8, 1989 (Gong1989, 1362), Supreme Court Decision 90Hu2256 delivered on November 12, 1991 (Gong1992, 118), Supreme Court Decision 90Hu1260 Delivered on March 31, 1992 (Gong1992, 1427), Supreme Court Decision 91Hu1533 delivered on March 31, 1992 (Gong192, 1433), Supreme Court Decision 91Hu1656 delivered on May 8, 192 (Gong192, 1856), Supreme Court Decision 96Hu658 delivered on March 25, 197 (Gong19657, March 25, 199)
Bodridb Mabrob dibal phishington (Attorneys Cho Tae-tae et al., Counsel for the defendant-appellant-appellant)
The Commissioner of the Korean Intellectual Property Office
Patent Court Decision 99Heo8653 delivered on June 22, 2001
The appeal is dismissed. The costs of appeal are assessed against the plaintiff.
Article 1(2) and (3) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199, Jul. 1, 1987) provides that any person who intends to file a patent application for an invention using a micro-organism shall deposit the micro-organism with a depository agency designated by the Commissioner of the Korean Intellectual Property Office and append documents certifying the deposit thereof to the application: Provided, That if a person who has ordinary knowledge in the technology to which the micro-organism belongs (hereinafter referred to as a "party") can easily obtain the micro-organism, he may not make a deposit. The purpose of this provision is to confirm the actual existence of the micro-organism in the art of the extreme world and obtain it again, unless there is a guarantee that it is possible to obtain it again, the production of the final product or the intermediate product can easily obtain it by the party, even if it was not deposited in his own, and if the final product or the product produced by the party can be easily obtained in the process of producing it, and if it is recorded in the specification or the final product declaration of 97.57.
According to the records, the patent-application invention of this case is using microorganisms, such as Becter pD1 or PBD, PBD COS-7 or BHK, etc., which is not deposited with the domestic depository designated by the Commissioner of the Korean Intellectual Property Office, so it should be proved that the party can easily obtain these microorganisms.
First of all, Beck pD11 is comprised of pDFR-III, SV40 original diagnosis and promotion, and pDHFR-III is stated in Gap evidence No. 9, but there is no proof that it can be easily obtained starting materials for manufacturing pDHFR-III (the fact that is published in the literature does not prove that it is not easy to obtain). Gap evidence No. 12 is a ATR322 for a micro-organism inserted in SV-40 DNA, but it cannot be known whether the micro-organism is sold to anyone at the time of the filing of the patent application for the invention of this case, and it is difficult for the party to recognize that the PD11 or its starting materials can be easily obtained at the time of the filing of the patent application for the invention of this case.
In addition, while veckter PBD was deposited with ATCC, the fact of deposit alone cannot be found to have been sold or sold to anyone at the time of the application for the invention of this case. The written statement of evidence No. 28 of the PBD does not guarantee the free sale of PBD, and there is no evidence to prove that the DHFR, MT-I, and SV-40 DNA was easily obtained from the starting material for manufacturing PBD at the time of the application for the invention of this case.
Therefore, the patent registration of the invention of this case should be refused because the invention of this case constitutes an invention that could not be easily reproduced by the party, without examining any other documents, unless it was deposited with the domestic depository designated by the Commissioner of the Korean Intellectual Property Office, among microorganisms used in the patent application invention of this case, and there is no evidence to prove that the party can be easily obtained at the time of filing the patent application of this case. Thus, the decision of the court below to the same purport is just, and there is no error of law such as misunderstanding of legal principles as to the deposit of microorganisms, incomplete deliberation, or omission of judgment as asserted in the grounds for appeal.
Therefore, the appeal is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.
Justices Kim Ji-dam (Presiding Justice)