2001Hu2801 Rejection Decision(Patent)

by Supreme Court of Korea

Justices Son Ji-yol(Presiding Justice), Cho Moo-jeh, You Ji-dam(Justice in charge), Lee Kyu-hong

Main Issues

1. The meaning of legal principle that an invention for which a patent is applied satisfies the requirement of industrial usability under the Patent Act if it is feasible to use the invention for industrial purposes only at the future date, but not at the patent application date
2. The case holding that usability for industrial purposes does not exist because the invention for which a patent is applied cannot be exploited for technological reasons as of the date of patent application

Summary of Judgment

1. The legal principle that an invention for which a patent is applied satisfies the requirement of industrial usability under the Patent Act even if it is possible to use the invention for industrial purposes only at the future date, but not at the patent application date, means merely that an industrial exploitation of the pertinent invention may take place in the future, and it does not include the case where the industrial usability arises for the first time in the future by advances of relevant technology.
2. The case holding that, using the patent application date of the invention as the basis date, it cannot be viewed that the technology used in the invention for which a patent was applied has the usability for industrial purposes in the future because it was not easy technologically to extricate sufficient amount of dendritic cells from human blood as of the patent application date since a dentritic cell comprises less than 0.5% of blood mononuclear cells, and they became extinct within the several days from being separated, and so, the research was not easy; further, the technology of extricating dentritic cells from human blood and triggering an immune reaction by means of those cells was implemented into the clinical practice only after the patent application date of this case by advances of relevant technology

Reference Provisions

1. Article 29 (1) of the Patent Act

Article 29 of the Patent Act (Requirements for Patents)

(1) Inventions having Intellectual applicability may be patentable unless they fall under any of the following subparagraphs:

1. Inventions publicly known or worked in the Republic of Korea prior to the filing of the patent application; or
2. Inventions described in a publication distributed in the Republic of Korea or in a foreign country prior to the filing of the patent application or inventions made accessible to the public through electric communication lines as prescribed by the Presidential Decree.

• Plaintiff, Appellee: The Immune Response Corporation (Attorney Jou Sung-min and 3 others, Counsel for the plaintiff-appellee)

• Defendant, Appellant: Head of the Korean Intellectual Property Office

• Judgment of the court below: Patent Court Decision 2000Huh6387 delivered on August 17, 2001

Disposition

The court below's decision is reversed, and the case is remanded to the Patent Court.

Reasoning

According to its decision, the court below rendered its judgment with the purport that it cannot agree with the reasoning that the invention of this case for which a patent is applied does not have usability for industrial purposes, the conclusion of which was obtained under the premise that dendritic cells of the invention of this case for which a patent is applied are obtained from human spleens by means of a surgical operation; further, the patent application invention of this case is not an invention of a medical treatment method as to which industrial usage is denied, but an invention of a thing called as a "dendritic cell"; and, a corporal damage or inhumane restrictions upon corporal freedom does not arise from exploiting such invention. The court below reasoned as follows that the only method of obtaining dendritic cells related to the invention of this case as stated by the exploitation example of the specifications of the invention of this case was from human spleens; however, the possibility of obtaining dendritic cells from human blood has been already known prior to this patent application date; and actually, the technology of triggering an immune reaction by dentritic cells extricated from human blood was implemented into the clinical practice after the patent application date of this case. The court below further reasoned that, although obtaining dendritic cells through a surgical operation was the general practice and the method of obtaining dentritic cells from human blood was not used in industries as of the date of a patent application of this case because of the difficulties of obtaining dentritic cells from human blood, the person having the generally accepted knowledge in this technological area could easily anticipate at the patent application date of this case that it is possible to obtain necessary amount of dendritic cells from human blood in the future in tandem with medical developments.

However, the legal principle that an invention for which a patent is applied satisfies the requirement of industrial usability under the Patent Act if it is feasible to use the invention for industrial purposes only at the future date, but not at the patent application date, means merely that an industrial exploitation of the pertinent invention may take place in the future, and it does not include the case where the industrial usability arises for the first time in the future by advances of relevant technology. As was recognized by the court below, it was not easy technologically to extricate sufficient amount of dendritic cells from human blood as of the patent application date of this case because a dentritic cell comprises less than 0.5% of blood mononuclear cells, and they became extinct within the several days from being separated, and so the research has not been easy. Accordingly, in rendering a judgment using the patent application date of the invention of this case as the basis date of making a decision, it is hard to rule that the technology used in the invention of this case for which a patent was applied is usable for industrial purposes in the future, because the technology of extricating dentritic cells from human blood and triggering an immune reaction by means of those cells was implemented into the clinical practice only after the patent application date of this case by advances of relevant technology.

Nonetheless, the court below decided that the invention of this case for which a patent was applied is usable for industrial purposes because dendritic cells related to the invention of this case can be obtained from human blood. Thus, the court below erred in matters of law by misunderstanding legal principles as to the usability for industrial purposes, which affected the conclusion of its judgment. The ground for appeal pointing this out is justified.

Therefore, the court below's decision is reversed without considering the remaining grounds for appeal, and the case is remanded for a new trial determination. It is so decided as per Disposition by the assent of all Justices who heard the case.