[1] In the case of micro-organisms not deposited under the former Patent Act, whether the method of obtaining such micro-organism and the place of obtaining it should be stated in the application specification, in addition to the verification by the applicant (negative), and in the case where the starting micro-organism can be easily obtained in the invention using the micro-organism, and where the specifications are written in the specification so that the process of manufacturing the middle-living or the final products can be easily reproduced, the deposit of the final-living or the intermediate products (negative)

[2] The case holding that the specification of the invention claimed in the application is not so specified that it can be carried out easily by the party, on the ground that it was not proved that it could not be easily obtained the unclaimed micro-organism

[1] Article 1 (2) 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 it with an institution designated by the Commissioner of the Korean Intellectual Property Office and append documents certifying the deposit thereof to an application." Paragraph (3) provides that "in case of paragraph (2), if a person with ordinary knowledge in the technical field to which the invention belongs can easily obtain it, the deposit may not be made if the micro-organism can be easily obtained in the domestic market." This provision provides that if the actual existence of the micro-organism is confirmed and it is impossible for the person to obtain it again, it shall not be deemed that the new micro-organism can be easily used for the industry because it falls under Article 1 (3) of the former Enforcement Decree of the Patent Act, and it shall not be deemed that the applicant can easily obtain the specification of the micro-organism at the time of application, and it shall not be deemed that the new micro-organism can be easily obtained within the domestic market.

[2] The case holding that the specification of the invention claimed in the application is not so specified that it can be carried out easily by the party, on the ground that it was not proved that it could not be easily obtained the unclaimed micro-organism

[1] Articles 6(1) and 8(3) (see Article 29(1) of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990), Article 1(2) and (3) (see Article 2(1) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199 of Jul. 1, 1987) / [2] Articles 6(1) (see Article 29(1)), 8(3) (see Article 42(3)) of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990), Article 1(2) and (3) (see Article 2(1) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199 of Jul. 19, 197)

[1] Supreme Court Decision 90Hu1512 delivered on August 27, 1991 (Gong1991, 2439), Supreme Court Decision 90Hu1260 delivered on March 31, 1992 (Gong1992, 1427), Supreme Court Decision 96Hu658 delivered on March 25, 1997 (Gong197Sang, 1235)

Bodridb Dolb Dolb Dolb Dolb alb phishington (Patent Attorney Kim Jin-jin, Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

1. The plaintiff's claim is dismissed.

2. Litigation costs shall be borne by the plaintiff.

The decision made by the Intellectual Property Tribunal on September 30, 1999 by the Korean Intellectual Property Tribunal on the case No. 98 Won250 shall be revoked.

1. Basic facts

[Ground for recognition: Facts without any dispute]

A. Summary of the patent application invention of this case

The invention of this case [the patent application No. 87-6561//67 June 27, 1987 (the patent application No. 879,423 of the U.S. application No. 876 of Jun. 27, 1986)] is related to the technology in which the Elomonmon, which serves as an important role in regulating the formation process of the Red Blood Zone, produces nicotine in dynamic engineering, and the claims are as follows:

“The method of inserting the New Crelive Erethr fever as indicated in the first degree containing the Apa I limit segment of nicotine in human Erethropos, into fluor, to obtain a vecor by inserting it into such vecor, to such vector the form and quality of the cell bed, the method of making cell be contacted with the cell bedipator so that the cell bedipine with this form and quality can indicate nicotine into Erethrpos, and the method of realizing the form and quality of nicotine into the association of persons with biological vitality, including the stage of recovering nicotine into the Erethrpos.

2. For purposes of paragraph 1, the above fludrid is characterized by PD11 or PBD.

3.In paragraph 1, the method by which the head of the house-to-7 cell or BHK cell is characterized by COS-7 cell or BHK cell.

4. In paragraph 1, the above cell owner shall provide 2 million liter per 1 liter of a solar distribution area with a characteristic of providing nicotine nomenclature nomenclature nomenclature (Unit)."

B. Summary of the grounds for the instant trial decision

For the following reasons, the Korean Intellectual Property Tribunal rendered a decision to dismiss the plaintiff's appeal against rejection ruling on the ground that the patent application invention in this case was not deposited with the micro-organism essential for repeated reproduction, and that its easy admission is not proved, and the specification was not stated to the extent that the person with ordinary knowledge in the technical field in this case could easily implement the patent application in this case, and that the original circumstance which rejected the registration under Articles 6 (1) (main sentence) and 8 (3) of the former Patent Act (amended by Act No. 4207 of January 13, 190; hereinafter the same shall apply) and Article 1 (2) of the Enforcement Decree of the same Act is justifiable.

Article 1(2) of the former Enforcement Decree of the Patent Act (amended by Presidential Decree No. 12199, Jul. 1, 1987; hereinafter the same shall apply) provides that an invention filed in this case fails to meet the requirements for deposit of micro-organism under Article 1(2).

(2) Microbials used to produce PEO of the invention claimed in the instant application are Apa of the human flaburian Y I, Becter pD11, pBD, COS-7, and BHK. Among them, one of the following items is specified in the detailed description of the invention in the Apath of the human flabur embur embur embur embur embur embur cOS-7 and BHK. As such, it is recognized that the method of manufacturing can be easily obtained by a person with ordinary knowledge in the technical field in question to the extent that the method of manufacturing can be easily carried out by a person with ordinary knowledge in the art in question.

(3) However, COS-7 and BHK used as a main cell are equal owners deposited with an international depository institution (ATCC), but the depository institution is not a depository institution designated by the Commissioner of the Korean Intellectual Property Office at the time of the application for the invention of this case, and it is not required to deposit COS-7 cell only if the method of acquisition is indicated in the detailed statement. However, the specification of the invention of this case does not include any description thereof.

(4) And the vector pD11 and pBD used to manufacture the conversion of the form and quality are not indicated in the specification of the invention in this case by the method of acquisition or the method of preparation.

(5) In addition, there is no deposit of PD11-EP, PBD-EP itself, which is the final recooperative representative that can produce PEO.

⑥따라서 이 사건 출원발명은 에리트로포이에틴(Erythropoietin；이하 'EPO'라 한다)을 형질발현시키는 방법을 재현하기 위하여 반드시 이용하여야 하는 벡터와 숙주세포가 기탁되어 있지 아니하고, 그에 대한 용이입수성도 이 사건 출원발명의 명세서에 기재되지 아니하며, 최종 재조합 발현벡터 또는 최종 형질전환 세포도 기탁되어 있지도 아니하여, 당해 기술분야에서 통상의 지식을 가진 자가 이 사건 출원발명을 용이하게 실시할 수 있도록 명세서가 기재되어 있지 아니하므로, 구 특허법 제6조 제1항 , 제8조 제3항 및 같은법시행령 제1조 제2항 의 규정에 위반된다.}

2. Whether the trial decision of this case is legitimate

A. Summary of the grounds for revocation of the Plaintiff’s trial decision

(i)The final living or intermediate products of the invention of this case, even though they are not deposited in their own, if the starting microorganisms required in the process of generating them can be easily obtained by a person having ordinary knowledge in the technical field to which the invention pertains, or if the process of manufacturing the intermediate living or final living products is indicated in the specification that it can be easily reproduced by a person having ordinary knowledge in the technical field to which the invention pertains, the final living or the intermediate living products themselves shall not be required to be deposited.

(ii)PD, a vector used in the instant pending invention, and PBD, even though the specification of the instant pending invention does not contain a detailed preparation method by those vector, the structure of these vector in the drawing is urban, and can be easily included in all the components, so if the party involved, it would have been able to readily sctor by using the vector’s DNA technology.

(3) COS-7 and BHK, a main cell used in the instant patent application invention, could have been easily obtained by the party at the time of the instant patent application invention.

(iv)The process of inserting Apa I parts into such veter pD11 or PBD by inserting such I parts of Apa, and the process of converting the form and quality of the host cell into the host veter to the sub-cooperative veter is not only the ordinary technology of the current industry, but also the common technology of the host veter, and is also listed in the table 3 and 4 of the application of this case;

(5)Therefore, even if microorganisms related to the invention of this case are not deposited, the invention of this case cannot be deemed to be an unsatisfying invention, and it cannot be deemed to be an unsatisfying invention.

(b) Markets:

(1) Article 1(2) of the former Enforcement Decree of the Patent Act provides that “any person who intends to file a patent application for an invention using a micro-organism shall deposit the micro-organism with an organization designated by the Commissioner of the Korean Intellectual Property Office and append documents certifying the deposit thereof.” Paragraph (3) provides that “if, in the case of paragraph (2), the micro-organism can be easily obtained by a person with ordinary knowledge in the technical field to which the invention belongs, it need not be deposited.” This cannot be seen as falling under the case where the actual existence of the micro-organism is confirmed in the nature of the micro-organism existing in the extreme world and it cannot be said that it can be easily exploited by the party’s business operator unless it is guaranteed that the micro-organism can be easily obtained, and it is not necessary for the applicant to deposit the micro-organism at the time of application to the effect that it supplements the specification of the application, and it is not necessary for the applicant to freely obtain the micro-organism at the time of issuance of it, and it is not necessary for the applicant to enter it in the specification and list within the Republic of Korea.

(ii)The filing invention of this case is about the mass production method of PEO. The invention of this case, by inserting parts I of Apa, including EPO genes, into Becter pD11 or PBD, prepares an intermediate vector pD11-EP or pBD-EP, and converting COS-7 or BHK, the main cell, into the host vector, into the form and quality of the final product and converting the PE-7 or BHK into the final vector of these sub-cooperative, and then manufacturing EPO from this point. No dispute exists between the parties to this case’s patent application, as well as the vector vector or final vector vector vector vector vector vector vector vector vector vector vector vector vector vector vector vector vector vector vector ver.

(a)First of all, there is no dispute between the parties as to the fact that Part I Apa of the human fribro, among the microorganisms related to the invention of this case, could be easily obtained by the party in accordance with the technology described in the table 1 of the invention of this case and the table 2 of the practice.

(B) We examine the following vector pD11:

(4) According to the Patent Gazette of this case, the Patent Gazette of this case is recommended to be referred to in the NAV 13rd Epics Red-8, 1341-85, 1985 and reference from the NAV 2nd Epics, 40 (SV-40), PEV 2nd Epics-1, PEV 3rd Epics-2, PEV 40 (SV-40), PEV 5th Epics-1, PEV 3rds-2, PEV 5th Epics-3, PEV 11, 350.

However, as can be seen from the drawings No. 2 attached to the application invention of this case, PD11, a vector used in the application of this case, is the starting material of pDHFR-III, SV40 original dust and promotion factors. Although there is no indication in the specification of the invention of this case as to the pD11 or the method of easily obtaining its starting material, pDFR-III argues that the method of manufacturing is indicated in the "Nucleic Acides Res Mo.13, 841-857, 1985" (Evidence No. 9), which is the reference document written in the specification of the invention of this case, "Nucleic Acidess Res Mo. 80, 50 original dust and promotion factors," which can be easily known to the head of the agency prior to the filing date of the ACC No. 1, 201, the ACC No. 1, as the filing date of the application of this case.

With respect to the APHFR-III, the APHFR-III contains a method of manufacturing PDHFR-III, but the APHFR-III is written as the starting material for manufacturing PDHFR-III. However, the AP is not easily known as to whether the PHFR-III material should be easily obtained for ① the left-hand side of the AHV (0-1), ② the main aftermath (MLP), ② the main aftermath (MLP-2), ③ the detailed livers (L1-3), ④ the third livers (L1-3), ④ the third 5's Slice (S), ⑤ the 3'NFR-3's Tablin (S) and the xM-40's EcoRI (SI) and the 6's PL-6's PHP material.

In relation to SV-40 DNA, Gap evidence No. 11 is irrelevant to only the written statement of the head of ATCC head that free sale of PBR322, and Gap evidence No. 12 appears to be the ATCC synasium with respect to microorganisms inserted by SV-40 DNA in PBR322, but it cannot be seen that the micro-organism is sold to anyone at the time of the filing of the patent application of this case.

Therefore, based on each of the above evidence, it cannot be recognized that the party can easily obtain pD11 at the time of the application for the invention of this case, and there is no other evidence to acknowledge it. Therefore, the plaintiff's above assertion is without merit.

(C) We examine the following vector pBD:

The Patent Gazette of the patent application invention of this case contains MT-I professional mortar heat (referring to the original part of the paper, column and 292: 267-269, 1981) and a sign column that can be selected as DHFR existing in the PUC flass book" (No. 3, No. 244, No. 32, and No. 33). In light of the third degree of drawings attached to this description and the patent application, it can be known that the microorganisms from manufacturing the PBD are comprised of 5 PUC, 2HFR heat, 3 west and original heat and original heat, 4 MT-I professional engineer heat and 5 malvine mix and malvine mix, and 5 malvine malvine pans, etc.

However, the plaintiff's 2ndr 6thr 6thr 2ndr 6thr 2ndr 6thr 2ndr 6thr 6thr 9thr 6thr 6thr 6thr 9thr 6thr 9thr 1str 96thr 1str 96thr 1str 96thr 1str 96thr 1str 96thr 1str 96thr 1str 96thr 6thr 2thr 9thr 14thr 96thr 14thr 96thr 6thr 92thr 1str 92thr 1str 6thr 9thr 9thr 1str 9thr 1str 6thr 9thr 1str 2thr 2thr 2thr 2thr 9thr 3thr.

According to the statement of PBD, and evidence No. 13, the vector stated in the specification of the invention in the patent application of this case is PBD, and PBD exists according to the statement of evidence No. 14 (No. 248), PBD exists, PBD also PBD6, PBD8, PBD9, and PBD9. Thus, it cannot be said that PBD listed in the specification of the invention in the patent application of this case is the same as PBD8 deposited in ATCC, and only the statement of evidence No. 13 cannot be seen as being sold to anyone at the time of the application of the patent application of this case.

In addition, evidence No. 28 cannot be deemed to have freely sold to any party for research purposes a letter of doctor's degree or a letter of doctor's degree at which it had been freely sold to any party for research purposes, and the above statement shall not be deemed to have been obtained from the party's doctor's degree at any time, since the above statement states that "vecter PBD shall be for commercial purposes and shall obtain permission from the organization of doctor's degree at l.m., if the requested l.m. is included in limited monopolys by other commercial organizations." Thus, it shall not be deemed that the PBD could have been easily obtained from the party's doctor at any time.

In addition, in relation to the PBD's components, according to the specifications of PUC or Gap evidence Nos. 22 and 23, it cannot be deemed that the same micro-organism was deposited in ATCC since the micro-organism deposited in ATCC9 is PUC9, and there is no evidence to deem that the DHFR and MT-I could have easily obtained at the time of the filing of the application for the invention of this case, and as seen in the above paragraph (b) in relation to the SV-40 DN, the evidence No. 11 is irrelevant to the statement of the head of ATCC that freely sell PBR322, and the evidence No. 12 is irrelevant to the SV-40, and it cannot be seen to be easily obtained to anyone at the time of the filing of the application for the invention of this case.

Therefore, according to each of the above evidences, it cannot be recognized that the party can easily obtain the PDB at the time of the application for the invention of this case, and there is no other evidence to acknowledge it, and the plaintiff's above assertion is without merit.

(D) and with respect to COS-7 and BHK, a host cell.

In the Patent Gazette of the pending invention of this case, only stated “The Patent Gazette of the pending invention of this case,” “The COS-7 (Extension of Consectes) and BHK (the extension of green ham, etc.) 10% of the 10% of the cOS-7 (the extension of green ham, etc.) were born from the modified essential distribution of less bacos that contain the blood transfusion of the fetus.” (No. 3 No. 245 to No. 12).

However, the plaintiff did not indicate in the specification of the patent application invention of this case the method that can easily obtain BHK and COS-7, a well-known cell, and COS-7 was publicly announced in the literature "Nucleic Acides Res Vol. 8586, 1985" (Evidence No. 4), and as can be known in the written statement (Evidence No. 24) of the head of ATCC (the filing date of the patent application of this case), no one can easily purchase the invention after deposit with ATCC, an international depository institution, from March 8, 1983, which was made before the filing date of the patent application of this case, and as such, BHK asserted can easily be seen from the literature No. 96 date of the patent application of this case to the deposit of the ATCC, No. 165 date of the patent application of this case, No. 165 date of No. 20, No. 51,576 (Evidence No. 2) and the deposit No. 3161,516.

According to the evidence No. 24, COS-7, prior to the filing date of the patent application invention of this case, COS-7, on March 8, 1983, prior to the filing date of the patent application of this case, it is recognized that since anyone could have been able to purchase after the deposit date, anyone can easily obtain.

However, with respect to BHK, while the specification of the patent application invention in this case uses BHK as a host cell, it is different from the description of BHK on the ground that PHK was 21, as well as the description of BHK on the ground that PHK was deposited with CTR6281, and that BHK-21 was deposited with CTR8544. BHK is different from the description of BHK on the ground that CHK21, BHKK-K, BHK-29, BHK9, BHK21, BHA21, and CTR21, which was issued by ECCC, were deposited with BHK21, BHK-K, BHK-K9, BHK21, 31, BHHINININ, etc., and it cannot be readily concluded that BH-1 was deposited with BH-21, as it is separate from the description of BHCC.

Therefore, based on each of the above evidence, it cannot be recognized that the party can easily obtain BHK at the time of the application for the invention of this case, and there is no other evidence to acknowledge it, and the plaintiff's above assertion is without merit.

(e)Finally, I will look at PD11-EP and PBD-EP, vector of a recooperative.

The method of manufacturing the invention of this case is written in the specification 3 of the patent application invention of this case, and the main cell whose final form and quality are converted into the final form and quality is written in the specification 4 of the patent application of this case. However, as seen earlier, it cannot be deemed that the party can easily obtain BHK, and PD11 and PBD, which is a main cell, and the main cell converted into the form and quality cannot be easily obtained at the time of the application of the patent application of this case.

(3) Determination as to the Plaintiff’s assertion

The plaintiff asserts that the microbial known in the literature can also be easily obtained;

As seen earlier, in order to fall under Article 1(3) of the former Enforcement Decree of the Patent Act, the existence of the micro-organism should be verified and it can be easily obtained. However, it can be said that the existence of a micro-organism was confirmed by a publicly announced fact in the literature. However, it cannot be said that it can be easily obtained solely with the fact of the literature published. Thus, the Plaintiff’s above assertion is without merit.

In addition, the plaintiff asserts that the invention of this case was patented in a foreign country and satisfies the requirements for specification. However, in determining whether to obtain a patent in our country, the plaintiff's assertion is not a challenge to the examination of another country that differs from the legal system and customs. Therefore, the plaintiff's above assertion is without merit.

C. Sub-committee

Therefore, the patent application invention of this case is not deposited with the domestic depository designated by the Commissioner of the Korean Intellectual Property Office, and there is no evidence to prove that the party can easily obtain pD11 and pBD, which is a vector, and HK, at the time of the patent application of this case, at the time of the patent application of this case. Thus, without examining whether the detailed description and drawings of the invention include the process of manufacturing final products using these materials or the method of using these materials, the specification of the patent application invention of this case is not stated to the extent that the party can easily implement the patent application of this case. Accordingly, the trial decision of this case is justified.

3. Conclusion

Thus, the plaintiff's claim of this case is without merit.

Judge Gu-Appellee (Presiding Judge)