생명공학 관련 특허의 성립성과 In re Bilski 사건

Patent Eligibility Issue on the Biotechnology and In re Bilski

In 2008, the en banc bench of the Court of Appeals, Federal Circuit made its ruling on In re Bilski case. With the decision, the 12 judge panel suggested the new principle for the patentability named as the Machine or Transformation Rule(MOT Rule) and narrowed down the spectrum of the patentable subject matter which had once been broadened since the State Street Bank case of 1998. The new standard is now considered as firm in America. In consideration of the Federal circuit's change of attitude toward the patentability, this paper covered the case's effects on biotechnology patent. For that, several special issues on the biotechnology patent were dealt with, separated from the general patentability issues. Then, leading cases about the biotechnology patent were looked closely in connection with the Court's 2008 decision. Furthermore, the oral argument session of the Bilski case in front of the U.S. Supreme Court helped inferring certain possibilities. At the end, this paper derived four conclusions. First, the Classen case and the Prometheus case show that the Federal Circuit has been applying the MOT Rule to the biotechnology patents as well as the Business Method patents. The only difference is that the Circuit reads the term 'transformation' differently when it faces the biotech. Second, the Supreme court judges already shows their doubt about the MOT Rule, and reveals that they are aware of the need to handle the biotechnology field distinctly. Third, the impact of the Bilski case seems to get tougher, even it is to the attack against the biotechology patent itself. Fourth, the implications of the Bilski on Korean patent system would be more serious on the biotechnology rather than its original field of Business Method. In summary, the Supreme court's forthcoming decision on Bilski case will affects not only on the patentability examination standard, but also on the application standard of the patentability examination to the biotechnology patent. And it will gives a change to reconsider the Korean patent system, especially whether the definition of invention is suit for the new technology.