[1] The purpose of Articles 133-2 and 136(3) of the former Patent Act, and the scope of correction of errors permitted during a patent invalidation trial

[2] Whether all the technical ideas described in the detailed description of the invention shall be included in the claim(negative), and in a case where matters not described in the claim are included in the detailed description of the invention, whether the detailed description of the invention does not coincide with the claim(negative in principle)

[3] Method of 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 of inventive step (negative)

[1] The purport of Articles 133-2 and 136(3) of the former Patent Act (amended by Act No. 9381 of Jan. 30, 2009) is to allow a patentee who is the respondent in an invalidation trial to make a correction within the procedure of invalidation trial even if he/she does not request a separate trial for correction, but to make a request for correction within the procedure of invalidation trial. However, it does not allow a substantial expansion or modification of the scope of the claims. Reduction of the scope of claims or correction of errors within the extent that is not likely to infringe a third party’s rights, and correction of errors by correcting errors and resolving deficiencies in the entries. In light of such purport of the provision, the correction of errors include: (a) to clarify the meaning of the scope of claims in itself is not clear; and (b) to unify the detailed description of the invention; and (c) to ensure that there is any inconsistency or inconsistency between the claims.

[2] The scope of a patent application is specified as the scope of a patent application in whole or in part of the technical idea described in the detailed description, and since all the technical ideas described in the detailed description must not be included in the scope of a patent application, barring any special circumstance, it is difficult to deem that the scope of a patent application is included in the detailed description of the invention, on the ground that it is included in the detailed description of the invention, and it does not constitute

[3] In determining the inventive step of an invention, at least the scope and content of prior art, differences between the prior art and the prior art, and the level of technology of a person having ordinary skill in the art to which the invention pertains (hereinafter “ordinary technician”), shall be determined based on the evidence and other records. Based on such findings, whether an invention subject to the determination of inventive step differs from the prior art at the time of patent application can overcome such difference and easily make an invention from the prior art despite having knowledge of the technology described in the specification of the invention. In such cases, it shall not be determined ex post facto whether an ordinary technician can easily make an invention on the basis of the premise that the person having ordinary skill knows the technology described in the specification of the invention subject to the determination of inventive step.

[1] Articles 133-2 and 136(3) (see current Article 136(4)) of the former Patent Act (Amended by Act No. 9381, Jan. 30, 2009) / [2] Articles 42 and 97 of the Patent Act / [3] Article 29(2) of the Patent Act

[1] Supreme Court Decision 2004Hu3096 Decided July 28, 2006, Supreme Court Decision 201Hu3193 Decided February 28, 2013 / [3] Supreme Court Decision 2006Hu138 Decided August 24, 2007 (Gong2007Ha, 1486), Supreme Court Decision 2007Hu3660 Decided November 12, 2009 (Gong2009Ha, 2112)

[Plaintiff-Appellee-Appellee-Appellee-Appellee-Appellee-Appellant]

Epati Asia, LTD (Attorneys Han Han-chul et al., Counsel for the defendant-appellant)

Patent Court Decision 2014Heo133 decided August 28, 2014

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

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

A. The purport of Articles 133-2 and 136(3) of the former Patent Act (amended by Act No. 9381 of Jan. 30, 2009) is to allow a patentee who becomes the respondent in an invalidation trial to make a request for correction within the procedure for invalidation trial even if he/she does not request a separate trial for correction. It does not allow a substantial expansion or modification of the scope of the claims. It is to allow a reduction of the scope of claims or correction of clerical error and correction of clerical error to the extent that it is not likely to infringe upon a third party’s rights. In light of such purport, correction of such error does not clearly state the meaning of the claims in question if it is not clear, and it is difficult to view that it does not coincide with the detailed description of the invention in question or contains any inconsistency between the claims (see Supreme Court Decision 2006Hu31381 of Jul. 28, 2006).

B. We examine the above legal principles and records.

(1) In a patent invalidation trial on the instant patent invention (patent registration number omitted) using the name “heat preserving preserving preserving preserving preserving preserving pent”, the Defendant filed the instant request for correction with the same content as correction 1 to 4 in the judgment of the court below.

(2) Claim No. 1 of the instant patent invention (hereinafter referred to as “instant Claim No. 1”, and other claims shall be indicated in the same manner) is indicated as the material of the heat preserving device. The detailed description of the invention states that, as the material of the heat preserving preserving device, the material of the heat preserving device is indicated not only metal or mixing, but also high density plastics and composite material, etc. The instant request for correction contains deletion from the detailed description of the invention. The content of the instant request for correction is to delete high density plastics, composite material, etc., which are not indicated in the claims, as the material of the heat preserving device.

(3) However, it cannot be deemed that high density plastics, composite material, etc. described in the detailed description of the invention are not clear in itself. Moreover, it is difficult to deem that high density plastics, composite material, etc., which are not described in the claims, are included in the detailed description of the invention, are not inconsistent with the detailed description of the invention or inconsistent with the claims.

C. Examining the aforementioned circumstances and the reasoning of the lower judgment in light of the aforementioned legal doctrine, the lower court is justifiable to have determined that the instant request for correction does not constitute “a case where an ambiguous description is clarified”. In so doing, contrary to what is alleged in the grounds of appeal, there were no errors by misapprehending the legal doctrine

2. As to the grounds of appeal Nos. 2, 3, and 4

A. In determining the inventive step of an invention, at least the scope and content of the prior art, differences between the prior art and the prior art, and the level of technology of a person with ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary technician”), shall be identified based on the evidence and other records. Based on such findings, whether an invention subject to inventive step determination, even though it differs from the prior art at the time of patent application, can overcome such difference and make the invention easy from the prior art. In such cases, the determination of the inventive step should not be made ex post facto on the premise that the person with ordinary skill becomes aware of the technology described in the specification of the invention subject to inventive step determination (see, e.g., Supreme Court Decisions 2006Hu138, Aug. 24, 2007; 2007Hu360, Nov. 12, 2009).

B. We examine the above legal principles and records.

(1) In the instant Claim No. 1 invention, “heat preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving preserving products

(2) However, the instant Claim 1 invention has been adopted as a solution method to solve the technical task that can alleviate the pain or inconvenience by approving the cooling or greenhouse gas to the skin, with the characteristics of storing and transmitting heat in order to solve the technical task that can alleviate the pain or inconvenience. The instant Claim 1 invention does not include or present any description of such technical task and solution principles in the comparable invention 1. Further, the comparable invention 1 takes the technical task of making it possible to arouse the sense of finger when using the breathic or non-mix Nos. 1 as a part of the technical task that makes it difficult to consider the effect of changing the material of the actual container 1 from the comparable invention 1 to the breathic or sub-mix with the original technological task of the comparable invention 1, which is contrary to the technical task of the comparable invention 1, or is likely to have the effect of altering the substance of the actual container breathic or sub-mix 1 to the skin, or it is difficult to easily expect the remainder of the No. 1 invention made it difficult to be composed or combined.

(3) If so, unless ex post determination is made on the premise that the content of the invention disclosed in the specification of the instant patent invention had already been known, the person with ordinary skill could not easily derive the heat preserving heat of the instant Claim No. 1 from comparable Invention 1, and such ex post determination is not allowed as seen earlier, and thus, the nonobviousness of the instant Claim No. 1 cannot be denied. Furthermore, insofar as the nonobviousness of the instant Claim No. 1 is not denied, the nonobviousness of the instant Claim No. 2 through Claim No. 9, which is subordinate claim, cannot be denied.

C. Nevertheless, the lower court determined that the nonobviousness of the instant Claim Nos. 2 through 9, which is subordinate to the instant Claim Nos. 1, is denied based on comparable Invention No. 1, and on this premise, the nonobviousness is also denied. In so doing, the lower court erred by misapprehending the legal doctrine on the determination of inventive step, thereby failing to exhaust all necessary deliberations, thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds

3. Regarding ground of appeal No. 5

A. We examine the aforementioned legal principles and records.

(1) The technical task of the instant Claim Nos. 10 and 17 lies in the technical task of granting approval for the coolant or greenhouse gas to the skin to provide a diuseure that may alleviate pains or inconveniences. The technical task of the instant Claim Nos. 10 and 17 is to provide ion pulse to the skin so that cosmetics or medicine can be effectively absorbed into the skin by actively moleculing the molecular movement of cosmetics or medicine in the judgment of the court below. Thus, the technical task of the instant Claim Nos. 10 and 17 is different from the technical task to be resolved in both inventions.

(2) The heat preserving preserving heat in the instant Claims Nos. 10 and 17 consists of metal or mixtures materials with the characteristics capable of storing and transmitting heat, so that it can mitigate pains or pains by approving air conditioners or heat heat in the skin. The hedging in the comparable inventions Nos. 10 and 17, corresponding to this, can effectively absorb cosmetics or medicine into the skin by approving currents in cosmetics or medicine. Thus, these components are different in function or effect.

(3) In order to derive the heat preserving screen in the instant Claims Nos. 10 and 17 from the comparable inventions 2, the elements, such as an exhauster, etc. to supply electricity from the comparable inventions 2 ought to be omitted. The technical features of the comparable inventions 2 include making the currents approved from the exhauster to the exhauster through a hedge, so that cosmetics and medicine can be effectively absorbed into the skin. Therefore, it is difficult for an ordinary technician to easily think that he/she omits the elements, such as an exhauster, etc. to supply electricity from the comparable inventions 2.

(4) Thus, unless it is determined ex post 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 shall be deemed that the heat preserving preserving heat of the instant Claims Nos. 10 and 17 cannot be easily derived from the cited Invention 2, and such ex post determination is not allowed as seen earlier. As such, the nonobviousness of the instant Claims Nos. 10 and 17 cannot be denied. Furthermore, insofar as the nonobviousness of the instant Claims Nos. 10 and 17 is not denied, the nonobviousness of the instant Claims Nos. 11 through 16, 18 through 21, which are subordinate claims, shall not be denied.

B. Nevertheless, the lower court determined that the nonobviousness of the instant Claim Nos. 10 and 17 was denied by comparable inventions 2, and on this premise, the nonobviousness of the instant Claim Nos. 11 through 16, and 18 through 21, which are subordinate claims thereto is also denied. In so doing, the lower court erred by misapprehending the legal doctrine on determination of inventive step, thereby adversely affecting the conclusion of the judgment, by failing to exhaust all necessary deliberations. The allegation contained in the grounds of appeal on this point is with merit.

4. Conclusion

Therefore, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Poe-dae (Presiding Justice)