經通國際智慧產權事務所

On January 31, 2007, the Taipei High Administrative Court upheld the Taiwan Intellectual Property Office’s (TIPO) and the Committee of Appeal of the Ministry of Economic Affairs’ decisions of rejecting patent application with the title of “Infectious cDNA Clone of North American Porcine Reproductive and Respiratory Syndrome (PRRS) Virus and Uses Thereof”. In the said decision, the Court noted that because the claims of the disputed patent application were within the scope of utilizing microbial and biological materials which could not be easily obtained by ordinarily skilled person in the relevant art, as set forth in Article 30-1 of Patent Act, the claimant must deposit the said microbial and biological material at a local deposit institute designated by the Patent Authority no later than the application date of the disputed patent.

The Taipei High Administrative Court rendered the said decision based on the following reasons,

1. The production of the plasmid pT7P129A indicated in the description of the disputed patent required 10 continuous cultivation of the hogs followed by numerous procedures of molecular and biological operations including screening, mutation, sequencing, etc. As each of the said procedures required precise molecular and biological operation but the required operating conditions were not disclosed in the disputed patent, contrary to the appellant’s (Pfizer Ltd.) argument, the biological materials covered in the disputed patent could not be easily obtained by ordinarily skilled person in the relevant art.
2. Pfizer provided the argument of that the production process of the plasmid pT7P129A from PRRS virus indicated in the description of the disputed patent was merely an example of production process, and there were other alternative plasmids available for the ordinarily skilled person in the relevant art to easily obtain. The Court noted Pfizer’s argument of that the PRRS virus used in the disputed patent was replaceable with the CH-1a virus, but pointed out that the disputed patent also indicated the said PRRS virus to have 5% difference from the CH-1a virus. Thus, obtainment of the CH-1a virus did not equal to the obtainment of the said PRRS virus.
3. Pfizer also provided the argument of that according to the ordinary rule in the fields of science, because the utilization of the PRRS virus was already disclosed in scientific reports and articles, the people in the relevant art should have been able to easily obtain a sample of the PRRS virus from the authors of the said reports and articles. However, based on the fact that the said PRRS virus was obtained from three researchers at Purdue University, the Court reasoned that instead of the people in the relevant art, only the personnel of Purdue University could easily obtain a sample of the PRRS virus.

Based on the reasons listed above, the Court upheld the decisions by the TIPO and the Committee of Appeal, and rejected the disputed patent.

Organized and translated by Akina Pan

International Affairs