[2] The meaning of Article 42 (4) 1 of the Patent Act requiring the claim of a patented invention to be supported by a detailed description of the invention

[3] Legislative intent of Article 42 (4) 2 of the Patent Act requiring "the invention must be clearly and concisely described" to the claim of the patented invention

[4] The meaning of Article 42 (4) 3 of the Patent Act demanding that "it shall be stated only in the matters indispensable for the composition of the invention" as the claim for a patented invention

[5] The meaning of "to the extent that a person with ordinary knowledge in the art to which the invention pertains can easily conduct it" under Article 42 (3) of the Patent Act

[6] Whether an error in the specification attached to a patent application may be deemed as not having been made in violation of Article 42(3) of the Patent Act even if the error is ordinarily known to ordinary technicians (affirmative)

[7] The method to determine the technical scope or scope of the patent right in a case where the technical composition is unknown or it is not possible to determine the technical scope even if the claim of the patent invention is described in the claim

[8] The case holding that the scope of a patent right should be determined by considering the detailed composition, etc. of a patent invention, in determining whether the scope of a patent right is identical with the cited invention, since it is difficult to determine the scope of a patent right due to the reasons such as indicating a specific phase of step or action

A. Interpretation of Article 42 of the Patent Act

(1) As to the form and interpretation of the claim

In a case where the claim of a patented invention is indicated in the form "a method with a characteristic that includes any component", the circumstances that include all the elements indicated in the claim of the patented invention even if an additional work is conducted with an element that does not include all the elements indicated in the claim of the patented invention do not change. Thus, such implementation is not only within the scope of the right of the patented invention, but also within the scope of the patent right of the patented invention. Furthermore, the claim described in the aforesaid form is anticipated not only to include the elements explicitly indicated but also to include other elements

(2) As to Article 42(4) of the Patent Act

Article 42(4) of the Patent Act provides that a claim that intends to be protected shall be one or more claims, and that claim shall fall under each of the following subparagraphs, and the meaning thereof shall be interpreted as follows. First, claim 1 requires "the scope of patent claim shall be supported by a detailed description." From the standpoint of a person who has ordinary knowledge in the art related to the invention (hereinafter referred to as "ordinary technician") on the basis of the technical level at the time of the patent application, the meaning of claim is that it shall be able to clearly understand the technical composition or combination and effect of the invention only by the description as stated in the claim(s) as it is not clearly stated in the claim(s) because it does not constitute an invention as defined in Article 42(4)5 of the Patent Act, and it is not necessary to define the scope of claim(s) for the reason that it does not constitute an invention as defined in Article 30 of the Patent Act, and it is not necessary to define the scope of claim(s) as an invention as defined in the claim(s). Lastly, it is not permissible.

(3) As to Article 42(3) of the Patent Act

Meanwhile, Article 42(3) of the Patent Act provides that the detailed description of the invention shall state the purpose, composition, and effect of the invention to the extent that it can be easily implemented by a person with ordinary skills. The purport is to clarify the technical content and scope of the invention to be protected as a patent by disclosing its contents to a third party easily known only with the specification. Thus, a person with ordinary skills can understand the invention accurately and at the same time, without adding special knowledge in light of the technical standard at the time of application according to the specification (see, e.g., Supreme Court Decisions 9Hu2477, Jul. 23, 199; 2004Hu362, Nov. 25, 2005; 2004Hu362, Nov. 25, 2005). If there is an error in the description, even if the person with ordinary skills examined the detailed description and completed the ordinary test, it can be seen sufficiently if it is possible for the person with ordinary skills to reproduce the patent invention, it is against the provisions of 197Hu 196.5.

B. Determination in the instant case

(1) In light of the above legal principles and records, the invention of Paragraph 1, 16, and 21 of this case, among the claims for patent of this case (registration No. 165591), "Korea-U.S. automatic conversion method", is indicated as the "Korea-U.S. automatic conversion method with a characteristic of containing any stage and any stage" or "Korea-U.S. automatic conversion method with a certain stage and any stage," and the invention of this case is also intended to implement other elements than the elements explicitly stated. Further, the invention of this case does not have the purpose or effect of improving data management, storage and control process, nor is it intended to include the data management, storage and control process as one of the elements of the claims, and therefore, it is advantageous for the determination of patent requirements, but the scope of rights should be narrow, or the above process should not be described as the elements of the claims, and thus, it is unfavorable for the applicant to determine whether the patent invention of this case is carried out by the applicant's own intent or its scope of rights.

(2) Furthermore, prior to the fact that each claim of this case of the patented invention of this case is scheduled to be implemented by adding other elements in working the patented invention of this case. On the other hand, the adoption of the patented invention of this case, which requires the automatic conversion of Korean and English copied, is likely to include the process of storing, managing, and controlling data in working the patented invention of this case by either preparing a program or implementing such a program on a computer. However, in this case where it is difficult to find the circumstance that a person with ordinary skills should implement the patented invention of this case by preparing a program in addition to the above process is required to add special knowledge or undergo an excessive experiment in light of the level of technology at the time of the application, it cannot be said that the above process was not written in the detailed description of the invention, and therefore there is no specification contrary to Article 42 (3) or (4) 1 of the Patent Act.

(3) However, the second step of the instant Claim 13 invention cited in the instant Claim 1, the second step of the instant Claim 16 invention, and the second step of the instant Claim 17 through 20 invention cited in the instant Claim 16 invention, are separate from the word and word from the word and word and the word and the word in the instant Claim 17 through 16 invention (the specification of the instant invention is combined and explained by mixing the word and the word with the word and the word and the word). The detailed description of the invention is described in the drawings 2. However, the aforementioned description and the above drawings contain no quarterly condition for dealing with the word without any word and condition, and if the invention is dealt with without any word, the program’s detailed description and drawings 22 degrees 264, 267, and 167, and the second step of the instant Claim 17 to 20 inventions are inconsistent with the description and the description of the instant Claim 1 to the extent that it could not be understood that there is no possibility for the Defendant to understand the invention in the instant Claim 1 to be understoodable.

2. Judgment on the ground of appeal on the violation of seafarerism

A. Where two or more applications relating to the same invention are filed on different dates, only the applicant having the earlier filing date can obtain a patent for the invention. On the other hand, where the composition of the invention is unknown only by the description of the claim or where it is impossible to determine the technical scope even if the description of the claim is known or it is impossible to determine the technical scope, the technical scope or the scope of the patent as a whole shall be determined by supplementing other parts of the description, such as the detailed description of the invention or the drawing, as a whole, in addition to the description (see Supreme Court Decisions 90Hu1499, Nov. 26, 191; 2003Hu113, Feb. 13, 2004).

B. In light of the above legal principles and records, the scope of rights should be determined in consideration of the specific composition, including the example of the invention described in the specification and drawings, since the independent claims of this case (1), (16), (21) inventions do not include only a specific composition but also a specific step-by-step, it is difficult to clearly determine the scope of rights due to reasons such as stating a specific step-by-step function or action. Thus, in determining whether the subordinate claims which are limited to the inventions of this case and each of the above inventions are identical to the inventions filed prior to the patented invention of this case, the scope of rights should be determined by considering the detailed composition, etc. of the patented invention. Thus, the decision of the court below to the same purport is correct and there is no error in the misapprehension of legal principles as alleged in the grounds of appeal.

3. Judgment on the grounds of appeal on inventive step

For reasons indicated in its holding, the lower court determined that the nonobviousness of the instant Claim Nos. 2 through 15 is not denied by the inventions publicly notified prior to the filing of the patent application, and the instant Claim Nos. 16 and 21 inventions are subordinate claims to the instant Claim Nos. 16 inventions, and all of the elements of the instant Claim Nos. 17 through 20 inventions are subordinate claims to the instant Claim No. 16 inventions, and the instant Claim Nos. 17 through 20 inventions are subordinate claims to the instant Claim No. 16 inventions, and all of the instant Claim Nos. 22 through 25 inventions are subordinate claims to the instant Claim No. 21. In light of the aforementioned legal principles and records as to the interpretation of the scope of claims No. 21, the lower court’s determination is somewhat lacking in its reasoning, but is justifiable in its conclusion, and there is no error of law

4. Conclusion

Therefore, the part concerning claims 13, 17, and 20 of the judgment of the court below regarding patent claim No. 16591 is reversed, and that part of the case is remanded to the court below for a new trial and determination. The defendant's remaining appeal is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Nung-hwan (Presiding Justice)