Standard for determining the identity of the “defens” under Article 4(3) of the Utility Model Act with respect to the expanded earlier application

Article 4 (3) of the Utility Model Act

Supreme Court Decision 2010Hu2179 Decided April 28, 201 (Gong2011Sang, 1074)

An industry-academic cooperation foundation of a Silver University (Patent Attorney Kim Jong-ho, Counsel for plaintiff-appellant)

Defendant (Patent Firm AIP (Patent Attorney Lee Jae-soo et al., Counsel for the defendant-appellant)

Patent Court Decision 2013Heo7854 decided May 29, 2014

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined.

1. The identity of a device as stipulated in Article 4(3) of the Utility Model Act with respect to an expanded earlier application is distinguishable from the inventive step of the device. Whether the technical composition of the two devices is the same or not, and the effects of the device are also considered. Even if the technical composition differs, if the difference is merely an addition, deletion, or modification of an widely known and commonly used technology in a specific means to solve the task and thus the new effect does not occur, the two devices are substantially identical. However, if the difference in the technical composition of the two devices deviates from the aforementioned degree, even if the difference is within the scope that can easily be derived by the person with ordinary knowledge in the art to which the device pertains, the difference in the two devices is not the same (see Supreme Court Decision 2010Hu2179, Apr. 28, 2011, etc.).

2. We examine the above legal principles and records.

A. Paragraph 2 of Article 2 (2) (hereinafter “instant amendment petition”) of the claim(s) of the instant registered device (registration number omitted) with the name of “a fixed device for heating correction” (hereinafter “instant amendment petition”) (hereinafter “instant claim(s)” and other claims shall also be indicated in the same manner) means “highing (the name of the composition is 20 drawings marked in the specification of the instant registered device; hereinafter “the number written below the name of the composition means drawing signs”) is 0.1m or 4m wide in the direction of contact with the entrance and 0.1m or 4m long in the direction of contact with the entrance, and there is no obvious indication that there is such composition in the specification of the comparable device(s) 2, as indicated in the judgment of the court below, and no new technical difference between the new device and the new device and the new device cannot be found in the specification of the alternative device(s) cannot be found. However, the technical difference between the new device and the new device and the new device cannot be found in the combined design.

B. In addition, the amendment bill of Paragraph 3 of this case has the composition of "at the entrance from the entrance to narrow the diameter of the exit through screen (30) and that of "at the inner side of Nanasium formed Nanasium." However, the specification of the comparison bill 2 shows only "at the inner side of the tolerance (13)" that "at the inner side of the pipeline (14) can be formed only on the inner side of the pipeline (13)," and the two devices are different in technical composition. However, the difference in such technical composition cannot be deemed to be merely an addition, deletion, change, etc. of the well-known art from the specific means for solving the task, and due to that difference, the amendment bill of Paragraph 3 of this case, unlike the comparison bill 2, has the same effect as the comparison plan of Paragraph 3 of this case, not only is the inside side of the fixed bridge, but also the external side of the outer side of the outer side, and thus, it cannot be said that the new amendment bill of this case has the same effect as the comparison plan of this case.

C. Nevertheless, the lower court determined that the correction order of paragraphs (2) and (3) of this case was substantially identical to the comparison order 2 respectively. In so doing, the lower court erred by misapprehending the legal doctrine on the determination of identity in the expanded earlier application, thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds of appeal on this point

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Min Il-young (Presiding Justice)