[2] The meaning of "written document evidencing the deposit" under Article 1 (2) of the former Enforcement Decree of the Patent Act, and whether the specification submitted at the time of application for patent invention constitutes a document evidencing the deposit (negative)

[2] The phrase "documents evidencing the deposit" under Article 1 (2) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199 of July 1, 1987) refers to the document objectively evidencing the deposit of the relevant micro-organism, such as a notification of the serial number of the micro-organism issued by the institution entrusted with the micro-organism or a certificate of entrustment. Thus, even if the specification submitted at the time of filing of the application for a patent invention contains the deposit number, the name of the depository and the date of deposit, it can be deemed to meet the specification requirement under Article 31-2 (1) of the former Enforcement Rule of the Patent Act (amended by Ordinance No. 717 of July 7, 1987), and it cannot be said that the document evidencing the deposit of the relevant micro-organism is submitted with the submission of such written statement.

1. According to the reasoning of the judgment below, the court below held that the defendant's patented invention (patent registration number omitted) of this case consisting of "the manufacturing method of nicotine in the name of the plaintiff," is an invention using such micro-organism as human EPEgN, vecter, and live cell, etc., and the micro-organism deposited by the applicant does not constitute human EPEgN, Mada-HEPO2, Stda-HEPO3, and HEPO6, etc. (hereinafter referred to as the "organism of this case"), and that the patent application of this case is an applicant for subdivision of an international application (international application number omitted) under the Patent Cooperation Treaty, and that the patent application of this case does not have the effect of using such micro-organism within the scope of 9 days before and after the date on which the patent application of this case was filed, and it does not have the effect of using such micro-organism within the scope of 9 days after the date on which the patent application of this case was filed, and it should not be attached to the domestic depository.

2. Judgment on the grounds of appeal

A. In full view of the provisions of Articles 1(2) and 1(3) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199, Jul. 1, 1987; hereinafter the same shall apply), Article 1(3) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199, Jul. 1, 1987); Article 31-2(1) of the former Enforcement Rule of the Patent Act (amended by Ordinance of the Ministry of Trade, Industry and Energy No. 698, Jan. 29, 1985); if a person with ordinary knowledge in the field of technology to which the invention pertains could not obtain easily such micro-organism, he/she shall deposit such micro-organism with an institution designated by the Commissioner of the Korean Intellectual Property Office; if an international application under the Patent Cooperation Treaty is not accompanied by a document certifying the deposit of the micro-organism in addition to the deposit number, name, and date of deposit, he/she shall not be deemed to have completed the invention, even if the deposit of the Korea Intellectual Property Association was authorized by the deposit.

According to the above legal principles and records, the original invention of the patented invention of this case deposited the same micro-organism with ATCC of the United States, which is an international depository institution, and the Republic of Korea deposited the same micro-organism before February 28, 1987, which is the date of publication of the application, with the Korea Cyp Association of the Republic of Korea on September 12, 1986. Thus, the court below erred in the misapprehension of legal principles as to deposit of micro-organism in the judgment below which judged otherwise, although the deposit cannot be deemed to have been made after the date of deposit, the document certifying the deposit of the patented invention of this case, which is divided into the original invention after the date of deposit, cannot be separately attached to the application of the patented invention of this case, and the specification submitted at the time of the application of the patented invention of this case cannot be deemed to fall under the document certifying deposit. Thus, the court below's erroneous determination does not affect the conclusion of the court below that the scope of right cannot be recognized as an invention

B. A document evidencing the deposit of a micro-organism under Article 1(2) of the former Enforcement Decree of the Patent Act refers to the document objectively evidencing the deposit of the micro-organism, such as a micro-organism consignment number notice or consignment certificate issued by an institution entrusted with the micro-organism. Thus, even if the specification submitted at the time of the application for a patent, it can be deemed as satisfying the specification requirement under Article 31-2(2) of the former Enforcement Rule of the Patent Act, and it cannot be said that the document evidencing the deposit of the micro-organism under Article 1(2) of the above Enforcement Decree was submitted upon the submission of such application, and the fact that the micro-organism in this case was deposited with the ATCC of the United States alone cannot be said to have easily obtained the micro-organism in the field of technology to which the invention pertains, and it cannot be said that there is no reason to deny the patent application procedure or prevent any defect in the patent application procedure by simply submitting a certificate of deposit of the micro-organism at the examination stage of the patented invention.

C. Therefore, the patented invention in this case, which failed to meet the requirements for deposit of micro-organism, constitutes an unsatisfying invention, and in the case of an unsatisfy invention, the scope of rights cannot be acknowledged even before a final and conclusive trial decision on invalidation of a patent is rendered. Thus, the judgment of the court below that the plaintiff's challenged invention does not fall under the scope of rights of the patented invention in this case without comparison with the patented invention in this case is just, and there is no violation

3. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Yang Sung-tae (Presiding Justice)