[2] The case holding that there is no legal interest in seeking revocation of a trial decision on the part of the patented invention, since the patent right on the deleted part is deemed to have never existed from the beginning, where a correction decision becomes final and conclusive after the trial decision on invalidation of registration becomes final and conclusive

[2] The case holding that there is no legal interest in seeking the revocation of a trial decision on the part of the patent invention, since the patent right on the deleted part is deemed to have never existed from the beginning, where a correction decision becomes final and conclusive after the trial decision on invalidation of registration becomes final and conclusive

2. The part regarding the claim(1) of the patented invention No. 402909 among the trial decisions rendered by the Intellectual Property Tribunal on October 26, 2005 by the Intellectual Property Tribunal on the case No. 2005Da673 shall be revoked.

3. The costs of lawsuit shall be borne by the defendant.

A. On March 29, 2005, the plaintiffs filed a patent invalidation trial against the defendant who is a patentee with the Intellectual Property Tribunal, on the ground that the name of the invention was not non-obviousness by the comparable inventions listed in the attached Table 2, and the Intellectual Property Tribunal tried to dismiss the plaintiffs' appeal on October 26, 2005.

B. On the other hand, on February 7, 2006, after the plaintiffs filed a lawsuit against the trial decision of this case, the defendant filed a petition for correction trial against the patented invention of this case with the Intellectual Property Tribunal, and the Intellectual Property Tribunal deliberated on it as 2006No. 12 and rendered a trial decision to recognize correction on January 29, 2007, and thereby, the claim of this case (hereinafter referred to as "claim 1 invention of this case, etc.") was corrected from 1. 5 (A) to 1. 5 (B).

[Evidence] Evidence Nos. 1 through 3, Evidence Nos. 5 through 7, Evidence Nos. 8, Evidence Nos. 1 through 4, the purport of the whole pleadings

2. Determination on the legitimacy of the instant trial decision

(a) Where the scope of claims subject to a trial decision changes due to a correction after the trial decision, whether the revocation of the trial decision shall be made solely on the grounds therefor;

(1) The plaintiffs' assertion

The claim of the patented invention of this case was corrected by a correction trial decision which became final and conclusive after the trial decision of this case. The trial decision of this case is reasonable to re-examine the claim corrected in the Korean Intellectual Property Tribunal because there is no trial decision on the corrected claim. Thus, the trial decision of this case must be revoked.

(2) Determination:

According to Article 136(1) and (9) of the former Patent Act (amended by Act No. 6411, Feb. 3, 2001; hereinafter the same), “the patentee may request a trial to correct the specification or drawing(s) of a patented invention only when the scope of the patent is reduced, when a clerical error is corrected, or when the clerical error is clearly stated, and when a trial decision recognizing the correction becomes final and conclusive, it shall be deemed that the patent application, publication of the application, the patent ruling (patent decision) or the trial decision or the registration of establishment of the patent right is made in accordance with the corrected specification or drawing(s) after the correction becomes final and conclusive.” Accordingly, in cases where a trial decision recognizing the correction by filing a request for a trial to correct the scope of the patent in the specification of a patented invention becomes final and conclusive after the trial decision becomes final and conclusive, the scope of the patent which was based on the trial decision due to the correction of the scope of

However, “Trial decision” under Article 136(9) of the former Patent Act is deemed to have been rendered by the specification or drawing after the correction, and the scope of the patent application shall not be substantially expanded or modified under Article 136(2) of the same Act. Thus, it cannot be deemed that only the scope of the patent right, which is the substance of the patent right, should be reduced while maintaining the identity of the patent right. Thus, in a lawsuit seeking cancellation of a trial decision on the claim for invalidation of patent registration, a new ground for invalidation, which is not asserted in the trial procedure, may be asserted and presented as well as examined and determined (see Supreme Court Decisions 200Hu1290, Jun. 25, 2002; 200Hu1290, Jun. 25, 2002). Even if a trial decision on invalidation becomes final and conclusive after the correction of a patent application, the patent court’s decision on invalidation cannot be deemed to have become final and conclusive under Article 137(1) of the former Patent Court Act.

Therefore, even in the lawsuit of this case where the claims were corrected by a corrective decision after the trial decision of this case, it is possible to determine whether the grounds for invalidation of the patented invention of this case exist, and the plaintiffs' above assertion is without merit.

B. Whether the lawsuit against the invention of this case is legitimate

Ex officio, as to the legitimacy of the lawsuit against the inventions of paragraphs (2) through (11) of this case, the claims for the inventions of paragraphs (2) through (11) of this case were deleted by a corrective decision finalized after the trial decision of this case. In this case, the patent application for the claims after correction pursuant to Article 136(9) of the former Patent Act and the establishment of the patent right shall be deemed to have been registered. Thus, the patent right for the inventions of paragraphs (2) through (11) of this case shall be deemed not to have existed from the beginning. Therefore, as long as the trial decision of this case did not exist after the correction decision of this case became final and conclusive, it is reasonable to view that the lawsuit of this case does not have any legal interest to seek the revocation of the trial decision of this case.

C. Whether the claim 1 invention of this case is not written

(1) With respect to the location of packing (70) in the instant Claim No. 1 invention, it is clear that the scope of the claim contains “shots (66) and reds (70) among the upper parts of the upper parts of the pressure plate (64)” as “shots (66) and the upper parts of the case (58) shall be opened,” and it is obvious that the failure (70) are shots (66) and shots (58) between the upper parts and the upper parts of the pressure plate (64).

However, with respect to the location of stalking (70), the detailed description of the invention in the specification of the patented invention in this case is described as follows: “The upper part of the specification of the patented invention in this case is described as follows: “In order to ensure that the upper part of the specification of the patented invention in this case (56) is excavated by drilling (68) and connects (52) with the inner part of the connection (58) and the inner part of the case (56) are connected to the outer part (58) so as to prevent any leakage of the error (O) supplied through such connecting part (56) from being exposed to the outside, a stalking (70) is installed on the outer part of the case (58),” and in 6a and 6b of the drawings, the staling (70) is between the upper part of the case (58) and the outer part (62).

Therefore, with respect to the location of packing (70) invention of this case, the claims and the invention's detailed description and drawings are clearly different from the claims in detail. In the case where packing (66) is situated in the upper part of the pressure plate (64) and the upper part of the case (58) as in the claims of this case, it is difficult to find out the operating principle to prevent the external leakage of the case (62), unlike the case's outer part and the upper part of the case's outer part (58), since it cannot be said that the invention of this case is not supported by the detailed description, or that the invention is clearly and concisely described, as in the claims of this case, it constitutes the lack of entry under Article 42 (4) 1 or 2 of the Patent Act.

(2) In regard to this, the Defendant asserts that the location of salking (70) as indicated in the claim(s) of the instant Claim(1) is “the distance between the outer side of the case (58) and the outer side of the adjustment (62) as indicated in the detailed description and drawings.”

On the other hand, whether the claim is supported by the detailed description of the invention should be determined by the detailed description of the invention from the standpoint of a person with ordinary knowledge in the art to which the invention pertains. In light of the technical formula at the time of application, in a case where the contents commenced in the detailed description cannot be expanded or generalized to the scope of the invention, the claim can not be seen as supported by the detailed description (see Supreme Court Decision 2004Hu1120, May 11, 2006). Since the error in the description can easily be easily known by a person with ordinary knowledge in the relevant field, if an average technician is a person with ordinary knowledge, even if it is merely a degree that anyone can clearly understand and reproduce the patented invention according to the corrected description, it cannot be said that it is not an omission in the description (see Supreme Court Decision 95Hu1599, Jun. 14, 196).

In light of these criteria, in this case where the location of strawing (70) clearly known from the claim(s) of this case is different from the location of strawing (70) indicated in the detailed description and drawing(s) of the invention, and there is a difference in the specific operating principles to prevent the strawing supplied in the case from being leaked to the outside due to the difference in the location of 70) of such strawing(s). Thus, it cannot be said that the description in the claim(s) is merely a simple clerical error in the technical composition indicated in the detailed description and drawing(s) of the invention(s)

(d) Conclusion

Inasmuch as the patent registration of the instant Claim 1 falls under Article 42(4)1 or 2 of the Patent Act and the patent registration is invalidated, the instant trial decision, which concluded otherwise, is unlawful, and the instant Claim 2 through 11 is unlawful as there is no benefit of lawsuit.

3. Conclusion

Thus, the lawsuit of this case on the invention of paragraphs 2 through 11 of this case is dismissed as it is illegal as there is no benefit of lawsuit, and since the plaintiffs' claim against the invention of Paragraph 1 of this case is reasonable, it shall be accepted as it is. The dismissed part is based on the defendant's request for a correction trial, and it is decided as per Disposition by the court below.

Judges Cho Jong-soo (Presiding Judge) Kim Jong-soo