[1] The method of determining the inventive step of an invention pursuant to Article 29(2) of the former Patent Act, and, when determining the inventive step of an invention, whether a person with ordinary skill can make an invention easily on the premise that he/she knows the technology disclosed in the specification of the invention subject to the determination (negative)

[2] The method of determining inventive step where a claim described in the scope of the patent claim for a patented invention contains multiple elements / Where inventive step is denied by citing various prior art documents

[3] In a case where Gap corporation filed a claim for a patent invalidation trial against Eul, the patent holder of a patented invention named "a two direction multi-slive device" on the ground that the inventive step is denied by the comparable invention, and the Intellectual Property Tribunal recognized the claim for correction of Eul's claim and rejected Gap corporation's request for correction, the case holding that the correction invention cannot be denied by the comparison of inventions

[1] Article 29 (2) of the former Patent Act (amended by Act No. 7871 of March 3, 2006) / [2] Article 29 (2) of the former Patent Act (amended by Act No. 7871 of March 3, 2006) / [3] Article 29 (2) of the former Patent Act (amended by Act No. 7871 of March 3, 2006)

[1] Supreme Court Decision 2006Hu138 Decided August 24, 2007 (Gong2007Ha, 1486), Supreme Court Decision 2007Hu3660 Decided November 12, 2009 (Gong2009Ha, 2112), Supreme Court Decision 2010Hu2537 Decided March 24, 201 / [2] Supreme Court Decision 2005Hu3284 Decided September 6, 2007 (Gong2007Ha, 1582)

Nowon-gu Co., Ltd. (Attorneys Han Han-chul et al., Counsel for the defendant-appellant)

Defendant (Patent & Multilater Patent & Patent Attorney Kim Jong-hwan et al., Counsel for the defendant-appellant)

Patent Court Decision 2013Heo1351 Decided September 12, 2013

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

The grounds of appeal are examined.

1. Article 29(2) of the former Patent Act (amended by Act No. 7871 of Mar. 3, 2006) provides that if a person with ordinary skill in the art to which the invention pertains (hereinafter referred to as “ordinary technician”) prior to a patent application is published in a publication published domestically or publicly worked in a foreign country prior to the filing of a patent application or in a publication published inside or outside the Republic of Korea prior to the filing of a patent application, or can easily make an invention through telecommunication lines determined by the Presidential Decree (hereinafter referred to as “prior art”), the invention shall not be patentable. In determining the inventive step of the invention in accordance with the foregoing provision, at least 10 of the prior art, the scope and contents of the prior art, the difference between the invention subject to the determination of inventive step and the prior art, and the technological level of the ordinary technician, and on this basis, the invention can be easily determined by the Supreme Court’s decision 200 after the filing of the patent application, 201 after the filing of the patent application, 2007 inventions shall not be examined.

In addition, in cases where the claims described in the claims are multiple elements, it is not the object of the inventive step determination as a whole, which is an organic combination of each element, and each element is not the object of the inventive step determination independently. Thus, in determining the inventive step of the invention, the determination of the inventive step of the invention should only be based on whether a multiple constituent elements are publicly known after decomposition of the number of constituent elements stated in the claims, and the difficulty of composition as a whole that is systematically combined based on the unique task solution principle should be considered. In addition, in order to deny the inventive step of the invention by citing various prior art literature, the unique effect of the invention as a whole should also be taken into consideration. In addition, even if there are no recommendations, motive, etc. that the invention can be described in the prior art literature, or even if not, the technical level at the time of the application for the invention, technical common sense, basic task of the relevant technology, development trend, and the demand of the relevant industry.

2. We examine the above legal principles and records.

A. (1) In a patent invalidation proceeding against the patented invention of this case (patent registration number omitted), Paragraph (1) of the Claim Claim No. 1 (hereinafter referred to as the “Correction Claim No. 1,” and the other claims are also indicated in the same manner) with the name “slick-type mobile device” (hereinafter referred to as “slick-type 1-1” in the original judgment), which has two or more functions different from those of the upper body (hereinafter referred to as “slick-type 2”) in which the upper body can easily move to one direction for the lower body, one of which is one in the direction-setting of the upper body and one in which the upper body can easily be used for the lower body’s own function, and one in which the upper body can be used for the upper body’s own function (hereinafter referred to as “slick-type 3” in the original judgment), and one in which the upper body can be used for the upper body’s own function and one in which the upper body can be used for the upper body structure and one in which the duplicate can be used for the upper body.

(2) The comparable invention 2 and 4 as indicated in the lower judgment, which is premised on the method of using a functional key as one hand, did not appear as identical to the composition 5 of the correction invention of Paragraph (1) of this case. However, the comparable invention 2, like the composition 4 of the correction invention of Paragraph (1) of this case, appears to be “a composition where a cover is fast off in the upper part of the main body, a cover is exposed to the outside, and where a cover is located at the bottom of the main body, the functional key is exposed to the outside.” The comparison invention 4 of the comparison invention of Paragraph (1) of this case, as in the composition of the correction invention of Section 1 of this case, appears to be “a composition composed of arranging the function height and functional pressing at the lower part of the upper part of the upper body of the duplicate body of the main body,” as in the composition of the correction invention of Section 1 of this case.

(3) However, the specification of the comparable invention 2 states, “The rapid development of the latest telecommunication technology has been made, and the diversification of the use of the mobile communication device has been made, so it is possible to perform various functions, such as Internet search, video reproduction, and various games using the mobile communication device. Therefore, the large scale of the septic tank is required so that a large number of information can be printed out at one time, and the diversification is required for various signal inputs.” However, the perception of the technical task in the comparable invention 2 is possible to be installed in a separate location in the case of the mobile communication device, following the above description, “In the case of the mobile communication device, the liquid septic and kibert can be diversified,” but in the case of the non-commercial mobile communication device or the plastic mobile communication device, it can be said that the large-scale septic and rashing method of the mobile communication can be diversified at the same time, and it can be said that the large-scale septic and rashing method of the device can be combined with the large-scale septic and rashing method.”

In addition, as seen earlier, comparable invention 2 is deemed as one of the technical tasks that combines the large area of the liquid septic tank. An attempt to add functional key to the cover with which the liquid septic surface is installed in the comparable invention 2 is contrary to such technical task. Therefore, as to the specification of the comparable invention 2, the specification of the cited invention 2 is presented as follows: (a) the technical level, technical formula, basic task of the relevant technical field, development tendency, demand of the relevant industry, etc. at the time of the application of the patent invention in this case; (b) the ordinary skilled person can easily combine the above combination to make it possible for a person who is the other party to “in order to make the upper part of the upper part of the upper part of the upper part of the upper part of the upper part of the upper part of the upper part of the cited invention 2, and there is no obvious circumstance to recognize it differently from the record.

(4) Thus, unless ex post determination is made on the premise that the ordinarily skilled person already knows the contents of the invention disclosed in the specification of the instant patent invention, it cannot be easily derived from the cited invention 2 and 4, and such ex post determination is not allowed as seen earlier. Ultimately, even if the remainder of the elements except Composition 5 appear in the Cited Invention 2 and 4, the nonobviousness of the instant Claim 3, which is a subordinate claim citing the instant Claim 1, cannot be denied by the cited Invention. As long as the nonobviousness of the instant Claim 1, which is a subordinate claim citing the instant Claim 1, is not denied, the nonobviousness of the instant Claim 1, cannot be said to be denied.

B. Nevertheless, the lower court determined that the nonobviousness of the corrected inventions of paragraphs (1) and (3) of this case is denied by comparable inventions 2 and 4. In so doing, the lower court erred by misapprehending the legal doctrine on the determination of inventive step, thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds of appeal on

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 Lee In-bok (Presiding Justice)