Criteria to determine whether a correction of the scope of claims prescribed in Articles 133-2 and 136(3) of the former Patent Act is a case where the scope of claims is substantially expanded or modified, and where a correction of the scope of claims does not constitute a substantial modification of the scope of claims

Articles 133-2 and 136(3) (see current Article 136(4)) of the former Patent Act (amended by Act No. 7871 of March 3, 2006)

Supreme Court Decision 208Hu1081 Decided April 29, 2010, Supreme Court Decision 2012Hu627 Decided February 13, 2014 (Gong2014Sang, 627), Supreme Court Decision 2016Hu342 Decided March 22, 2017, Supreme Court Decision 2016Hu830 Decided April 12, 2018

Plaintiff 1 and one other (Law Firm LLC, Attorneys Choi Jung-tae et al., Counsel for the plaintiff-appellant)

Defendant (Attorney Lee Jae-chul et al., Counsel for the defendant-appellant)

Patent Court Decision 2015Heo579 Decided January 21, 2016

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

The grounds of appeal are examined.

1. Articles 133-2 and 136(3) of the former Patent Act (amended by Act No. 7871, Mar. 3, 2006; hereinafter the same) provides that a patentee may request a trial to correct the specification or drawing within the extent that does not substantially expand or modify the claims. Whether the scope of a patent is substantially expanded or modified shall be determined in preparation for the substantial contents of the claims identified by the specification and the entire drawing, including not only the formal description of the claim itself, but also the detailed description of the invention. If a correction of the scope of a patent constitutes a reduction of the scope of a patent, no change exists in its purpose or effect, and it reflects the contents written in the detailed description and drawing, and thus, it does not constitute a substantial change in the scope of a patent (see, e.g., Supreme Court Decisions 2008Hu1081, Apr. 29, 2010; 2013Hu386, Apr. 28, 2018).

2. We examine the above legal principles and records.

A. The instant amendment, subject to the instant patent invention (patent registration number omitted), “a room (22) abutting on the rear side” under paragraph (1) of the scope of claims, which is “the name of the instant patent invention (patent registration number omitted), is corrected to “a room (22) having been abutting on a Vic type.” This amendment constitutes reduction of the scope of claims, as it specifically limits the shape of the existing room.

B. In addition, the drawings 2 and 3 of the patented invention in this case contain a situation where the room is connected with a Vron shape centering on the end of the hole in which the room is spreading, and the detailed description of the invention states that “the room is generally connected.” If a person having ordinary knowledge in the art to which the patented invention in this case pertains is able to sufficiently grasp the composition of “a room connected with a Vrontype,” from the detailed description and drawings of the invention in this case, it does not change the purpose or effect of the invention before and after the correction in this case, and it merely reflects the contents described in the detailed description and drawings, and thus, it cannot be said that there is no possibility that any unexpected damage may be inflicted on a third party.

C. Therefore, the instant amendment does not constitute a case where the claim is substantially modified. Nevertheless, the lower court determined that the claim No. 1 was substantially modified due to the instant amendment. In so determining, the lower court erred by misapprehending the legal doctrine on determining whether the claim is substantially modified, contrary to what is alleged in the grounds of appeal, thereby adversely affecting the conclusion

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 Park Sang-ok (Presiding Justice)