유전자원의 출처표시의 특허 요건화 연구

Abstract

The movement to make biological resource as an intellectual property is active, and recently agreed Nagoya protocol gives strength to the international protection system of biological resource. There are different viewpoints depending on their national status whether the disclosure of biological material resource should be as an element of patentability. Developed countries including United States and Japan, and Republic of Korea oppose to make the disclosure of genetic resource to an element of patentability. They are on the position that Material Transfer Agreement (MTA) could fulfill the needs of disclosure requirement of genetic resource. On the contrary to developed country’s position, biological resource rich countries including Brazil, Peru, India, China etc. insist to make disclosure of biological resource as an element of patentability. China and India revised their patent act to make disclosure of biological resource as an element of patentability. Europe Community including Sweden agrees to make disclosure of biological resource as an element of patentability and try to make international biological resource protection system in WTO, WIPO and CBD. However, Europe Community including Sweden regard the disclosure of biological resource as an formal requirements of patentability, not as an substantial requirements which can be an rejection reason to patentability. In Korea there are disputations whether a disclosure of biological resource should be an element of patentability. According to an opposition position to make a disclosure of biological resource as an element of patentability, they oppose to make a disclosure of biological resource as an element of patentability because there are needs to guarantee a free usage of biological resource to research and there is worrisome to be requested by royalty remuneration from biological resource providing country. But there are needs to make disclosure of biological resource as an element of patentability as following reasons. First, there are needs to secure biological resources for Korean biological researcher; Second it needs to disclose biological resource for Korean researcher to be protected their patent rights in countries who have legal system requiring disclosure of biological resource in a patent application; Third there is no need to install simultaneously biological resource disclosure system with Access and Benefit Sharing (ABS) system; and Fourth, there is needs to introduce ABS system to mutual cooperation with biological resource rich country. For establishing disclosure system of biological resource in Korea, it is proposed to input a new paragraph to the Article 42(3) of Korean Patent Act, which is having “There should be a disclosure of biological material and its derivatives used for completion of invention which is protection sought in a detailed description of the invention.” It is also proposed that the disclosure requirement of biological resource should be a rejection reason, which can be used to encourage patent applicants to disclose biological resource to detailed description of invention. Also it is proposed that the disclosure requirement of biological resource should be a reason for ordinary people to provide information to a patent office so that a collective party or country eligible to have right of benefit sharing can file an information to patent office to prevent incorrect disclosure of biological resource and fraudulently disclosure of biological resource. However, it is proposed that the disclosure requirement of genetic resource should not be an invalidation reason because there is no role of biological resource for determining patentability such as novelty, inventive step and industrial applicability, and beside biological resource it needs lots of inventor’s endeavor and creativity to achieve invention which should be protected to give incentive to inventor. The problem of deciding whether to require disclosure of genetic resource as an element of patentability may greatly effect on the development of Korean biological industry. Thus further study and discussion in this regard should be followed.