Home > News & Topics > IP Court Case Summary:In re Regents of University of California H22(gyoke) 10029: The invention related to the cells is not essentially described in the citations when the cells in the citations can’t be distributed to third party by authors.
IP Court Case Summary:In re Regents of University of California H22(gyoke) 10029: The invention related to the cells is not essentially described in the citations when the cells in the citations can’t be distributed to third party by authors.
IP News
2010.12.27
On October 12, 2010, the Intellectual Property High Court (IPHC) reversed JPO board of appeal’s decision that the claimed inventions should be rejected due to lack of novelty and inventive step.
The invention at issue is “Human B-Lymphoblastoid Cell Line secreting Anti-Ganglioside Antibody”, which is identified as “L612”, and deposited as accession number CRL10724 by American Type Culture Collection (ATCC). On the other hand, there are citation-1 and citation-2, both of which have the description of “human B-cell systems to secrete L612” etc. but no deposition.
The defendant insists as follows. When the distribution of “L612” is required by third party, a contributor must distribute “L612” to third party according to the contribution rules of citation-1 and citation-2, and according to the custom in the scholar society. Therefore, the invention at issue is essentially described in citation-1 and citation-2.
In contrast, the plaintiff competed for the insistence of the defendant overall. The joint author A (also inventor of the invention at issue) of citation-1 and citation-2, who is in a position of supervising other authors, had no intention to respond to the distribution of “L612” which is described in citation-1 and citation-2. Moreover, A insisted that he had no intension to allow other joint authors to respond to the distribution of “L612”, and actually there was no request for the distribution from third party.
As for this judgment, the contribution rules of citation-1 and citation-2 do not have any absolute obligation to make authors distribute such cells, and it depends on the intention of each author whether such request is accepted. Even more particularly, in this case, the joint author A (also inventor of the invention at issue) of citation-1 and citation-2, who is in a position of supervising other authors, had intention to decline the request of the distribution only during the necessary period to keep the invention novel. Therefore, the invention at issue is not essentially described in citation-1 and citation-2, and JPO board of appeal’s decision was reversed.
<Citation-1>
Journal of the National Cancer Institute, 1990, vol.82, no.22, P1757－1760
<Citation-2>
Journal of Immunological Methods, 1990, vol.134, no.1, P121－128