[1] The legislative intent of Article 42(3) of the former Patent Act / The meaning of “working” in “an invention of a thing,” and the case where the invention satisfies the requirements stated in the aforementioned Article

[2] Legislative intent of Article 42(4)1 of the former Patent Act / Standard for determining whether a specification requirement under Article 42(4)1 of the former Patent Act is satisfied, and the case where a claim is supported by a detailed description of the invention

[1] Article 42(3) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007) provides that the detailed description of the invention shall state the purpose, composition, and effect of the invention to the extent that a person with ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary technician”) can easily implement the invention. This is to clarify the technical content and scope to be protected as a patent right by disclosing the contents of the invention in a way that a third party can easily understand it only with the specification.

However, in the case of an invention of a product, “working” refers to an act of manufacturing, using, etc. an article. As such, if an ordinary technician in an invention of a product does not have excessive experiments or special knowledge in view of the level of technology at the time of patent application, the product itself can be produced and used according to the matters indicated in the detailed description of the invention, even without proof for specific experiments, etc., if the ordinary technician can sufficiently anticipate the occurrence of the effects of the invention in light of the level of technology at the time of patent application, the requirements set forth in the above provision

[2] Article 42(4)1 of the former Patent Act (amended by Act No. 8197, Jan. 3, 2007; hereinafter the same) provides that a claim that intends to be protected shall be supported by a detailed description of the invention. This purpose is to prevent an unreasonable outcome of a patent granted for an invention not disclosed to the applicant by entering the matters not described in the detailed description of the invention attached to the patent application in the claim. Accordingly, the determination of whether a patent application satisfies the specification requirement under Article 42(4)1 of the former Patent Act shall be based on the technological level at the time of the patent application based on the technical level at the time of the patent application, and if a claim can be expanded to the scope of the invention or generalized to the scope of the invention described in the claim, the claim shall be supported by the detailed description of the invention.

[1] Article 42 (3) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007) / [2] Article 42 (4) 1 of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007)

[1] Supreme Court Decision 2010Hu2582 Decided October 13, 201 (Gong2011Ha, 2381) Supreme Court Decision 2013Hu525 Decided September 24, 2015 (Gong2015Ha, 1626) / [2] Supreme Court Decision 2004Hu1120 Decided May 11, 2006 (Gong2006Sang, 1070) (Gong2014Ha, 2074) Supreme Court Decision 2012Hu832 Decided September 4, 2014 (Gong2014Ha, 2074)

Indiana Co., Ltd. (Patent Attorney Shin Jae-ho et al., Counsel for the defendant-appellant)

A.S.C. (Patent Attorney Song-ju et al., Counsel for the defendant-appellant)

Patent Court Decision 2013Heo9744 decided August 28, 2014

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

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. Article 42(3) of the former Patent Act (amended by Act No. 8197, Jan. 3, 2007; hereinafter the same) provides that the detailed description of the invention shall state the purpose, composition, and effect of the invention to the extent that a person with ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary technician”) can easily implement the invention. This is to clarify the technical content and scope of the invention to be protected as a patent right by disclosing its contents to a third party readily recognizable only with the specification (see, e.g., Supreme Court Decisions 2010Hu2582, Oct. 13, 201; 2013Hu525, Sept. 24, 2015).

However, in the case of an invention of a product, “working” refers to an act of manufacturing, using, etc. the product. As such, in the invention of a product, a person with ordinary skill can produce and use the product itself based on the matters indicated in the detailed description of the invention without excessively adding experiments or special knowledge in view of the level of technology at the time of patent application. Even if there is no proof for specific experiments, etc., if it is possible for a person with ordinary skill to sufficiently predict the occurrence of the effect of the invention in light of the level of technology at the time of patent application, the requirements stated in the above provision can

In addition, Article 42(4)1 of the former Patent Act provides that a claim that states matters to be protected shall be supported by a detailed description of the invention. This purpose is to prevent unjust consequences granted to an invention that has not been disclosed to the applicant by entering matters not described in the detailed description of the invention in the specification attached to the patent application in a claim. Therefore, whether the elements to be described in the specification under Article 42(4)1 of the former Patent Act are satisfied shall be determined based on the level of technology at the time of the patent application in accordance with the aforementioned provision, based on the level of technology at the time of the patent application, on the basis of the detailed description. Thus, if the contents disclosed in the detailed description can be expanded or generalized within the scope of the invention described in the claims in light of the technological level at the time of the patent application, the scope of the claims can be deemed supported by the detailed description of the invention (see, e.g., Supreme Court Decisions 2004Hu1204, May 11, 2006; 2014Hu38, Feb. 28, 2014).

2. The court below determined that the patent claim(s) of the patented invention(s) of this case (patent registration number omitted) using the name of "IOBL") as "the patent claim(s) of this case (patent registration number omitted) of this case") is "an electrical and chemical brusium which combines both the passage for the introduction of samples and the joint donation of samples, has an electrical and chemical brusium with a sample sample with a protruding part formed at the point where the joint donation takes place." Based on the following circumstances, the above claim and the remainder of claims cited directly or indirectly in the above claim are not described in the purpose, composition, and effect of the invention to the extent that ordinary technicians can easily implement it (Article 42(3) of the former Patent Act Article 42(4)1 of the former Patent Act) or the claim(s) of this case were not supported by a detailed description (Article 42(4)1 of the former Patent Act).

(a) The reason for the occurrence of the proteket phenomenon is not clear, and the detailed contents of the proteket phenomenon do not seem to be self-written to ordinary technicians.

(b) It is difficult to easily understand which location the protruding part should be composed of a certain size and shape to prevent the protruding part from occurring in a protruding ticket.

C. It is difficult to easily understand whether the above effects of the patented invention have been actually achieved in a case where the protruding part forms the protruding part in a specific size and form in a specific position because the effects of the patented invention are stated “a correct measurement” and abstractly.

D. The technical task that, even if protruding parts are protruding, so long as the protruding protruding part does not lose in protruding part, the technical task is not yet resolved that “if an protruding ticket occurs in the part in which the extruding part comes into contact with the extruding part, it is impossible to make accurate measurements.”

3. However, the lower court’s determination is difficult to accept for the following reasons.

A. Whether the specification requirements under Article 42(3) of the former Patent Act are satisfied

(1) First, we examine whether the ordinary technician can produce and use the article itself from the detailed description of the invention.

(A) The detailed description of the invention related to this is that the location of the protruding part of the protruding part is the “branch where the protruding part and the protruding part are delivered” and the “Do 1 may be formed on the extension line of the protruding part as urbanized in Do 1, but not limited to them, and, for example, it may be formed in the same way as the protruding part and the protruding part as the protruding part.” In the case of the method of use of the protruding part of the protruding part of the protruding part of the protruding part, a sample is introduced as the protruding part by the situation of the mother customs, if the protruding part of the protruding part in the protruding part are in contact with the sample, the sample is to be supplied in protruding part, and again to be supplied in the protruding part.” In addition, the Do 1 on the protruding part is in the form of extension of the protruding part of the protruding part of the protruding part of the protruding part of the protruding part.

(B) Although there is no specific description about the size and form of protruding part in the above description, it is not likely that there is no obstacle to producing and using protruding part by an ordinary technician as appropriate for reference to the above description and Do 1.

(2) We examine whether the effect shown by the protruding part can be sufficiently predicted by the ordinary technician.

(A) In light of the detailed description of the invention related to the invention, the term protruding shall play a role to minimize the phenomenon of the saveket which may arise from the saves (or the intersecting point) where the test is introduced by providing a little surplus space at the point where the test is introduced and the saves (or the intersecting point) and the saves (or the intersecting point) where the test is introduced. The saves (or the intersecting point) where the test is installed are in contact with the save, and where the saves occur in this place, it shall not cause any problem that it is impossible to measure exactly,” and the judgment of the Republic of Korea (hereinafter referred to as the “Saves”) states that the saves (or the intersection point) and the saves (or the intersection point) where

(B) According to the record, the term “airbet phenomenon” refers to the phenomenon in which unnecessary air is staying in the way of liquid pipes, and is likely to have been widely known prior to the filing of the patent application of the instant patent invention. Therefore, if an ordinary technician is a technician, anyone would be able to understand the meaning of the above Airbet phenomenon, location of occurrence, etc.

(C) In accordance with the detailed description of the above invention, it is also reasonable for a person of ordinary skill to sufficiently predict that the instant Claim 1 invention has the effect of minimizing or relaxing the phenomenon of the emulgic book by “tamping”, which is an extra space to alleviate a sudden change in the emulgic dynamics between the passage of samples and the side where the emulgic emulgic emulgic emulg

(D) In addition, as long as the status of a protruding ticket can be mitigated by preparing protruding points, which are a surplus space, on the part of crossing the passage and the traffic donation, it can be deemed that the accuracy of measurement is lower than that of protruding points, even if the protruding tickets are not completely cut off.

(3) As above, insofar as a person who has ordinary skill can produce and use the goods listed in Claim 1 invention of this case by the matters described in the detailed description of the invention and can sufficiently predict its effect, even if he did not expressly state the theoretical basis for whether the above phenomenon can be mitigated through the causes or protrudings through the detailed description of the invention, it can be deemed that the elements stated in Article 42(3) of the former Patent Act are satisfied.

B. Whether the specification requirements under Article 42(4)1 of the former Patent Act are satisfied

Meanwhile, according to the aforementioned circumstances, from the standpoint of an ordinary technician, the matters described in paragraph (1) of this case and the matters responding thereto are indicated in the detailed description of the invention, and the contents commenced in the detailed description of the invention can be expanded to the scope described in the claims. Therefore, the claims cannot be deemed as not supported by the detailed description of the invention. Thus, there is no violation of the requirements stipulated in Article 42 (4) 1 of the former Patent Act, since they are not supported by the detailed description of the invention.

C. Nevertheless, the lower court determined that the registration of the instant patent invention should be invalidated because it failed to meet the requirements under Article 42(3) of the former Patent Act or Article 42(4)1 of the same Act. In so doing, the lower court erred by misapprehending the legal doctrine on the requirements for specification under each provision, thereby adversely affecting the conclusion of the judgment. The ground of appeal assigning this error is with merit.

4. 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 Park Sang-ok (Presiding Justice)