[1] Whether it is unlawful that the board of examiners did not give the patentee an opportunity to submit a written opinion when it decides to revoke the patent with respect to the patent claim corrected in the filing procedure (affirmative)

[2] The case holding that there was an error of law that did not give a patentee an opportunity to submit a written opinion during the filing of an objection

[1] Upon receipt of an objection, a patentee may submit a written response within a specified period from the date of receipt of a duplicate of the written opposition and request correction of the specification or drawings of the patented invention (Article 70(2) and Article 77(1) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)). Such correction must be entitled to a patent. If the above correction is unable to obtain a patent, the board of examiners shall notify the patentee of the reason and give him/her an opportunity to submit a written objection (Articles 77(3) and 136(3) and (4) of the Patent Act). The provision granting an opportunity to submit a written objection is a so-called compulsory provision that is due to the request of the public interest for examination to maintain the credit of the examination system, and thus, a collegial body has not given the patentee an opportunity to revoke the patent in the patent application procedure due to correction of the grounds for invalidation after correction and, even if, after the correction, it cannot be deemed unlawful in the patent application procedure.

[2] The case holding that there is an error of law that did not give a patentee an opportunity to submit a written opinion in the filing procedure

[1] Articles 69, 70(2), 77(1) and (3), and 136(3) (see current Article 136(4)) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) (see current Article 136(5))

Dpia Co., Ltd. (Patent Attorney Park Young-young, Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2001Heo7042 delivered on December 12, 2002

The judgment below is reversed. The decision made by the Intellectual Property Tribunal on October 31, 2001 on the case No. 2000 No. 655 of October 31, 2001 is revoked. The defendant bears the total cost of lawsuit.

1. As to ground of appeal No. 1

A. The judgment of the court below

According to Articles 77(3) and 136(3) of the former Patent Act (amended by Act No. 6411, Feb. 3, 2001; hereinafter the same), where the scope of the patent application is corrected in the procedure of patent objection, the corrected claim must be entitled to a patent at the time of patent application. Thus, if the above requirements are not satisfied, the patent nature should be determined by recognizing the correction and considering the corrected claim as the subject of the decision prior to the correction. However, it is contradictory to the decision that the patent registration should be revoked because there is no non-obviousness of the corrected claim, so it is evident that there is an error of law in the decision that the patent registration should be revoked. However, the court below rejected the Plaintiff’s request for revocation in the procedure of patent objection to the Plaintiff, even if the Plaintiff did not have any legitimate opportunity to revoke the patent application due to the lack of non-obviousness in the procedure of patent objection. Thus, the court below rejected the Plaintiff’s request for revocation of the patent application under Article 7(1) of the former Patent Act.

B. Judgment of the Supreme Court

(1) Upon receipt of an objection, a patentee may submit a written response within a specified period from the date of receipt of a duplicate of the written opposition (Article 70(2) and Article 77(1) of the former Patent Act). Such correction must be patentable, and if the above request for correction is not possible, the board of examiners shall notify the patentee of the reasons therefor and give him/her an opportunity to submit a written opinion (Articles 77(3) and 136(3) and (4) of the former Patent Act). The provision providing an opportunity to submit a written opinion is so-called mandatory provision to ensure the propriety of examination of the request for correction and to maintain the credit of the examination system, and it is due to the demand of public interest to maintain the credit of the examination system, and if the board of examiners did not give the patentee an opportunity to submit a written opinion while revoking the corrected claim in the patent objection procedure on the ground that there is no reason for invalidation after correction, it shall be unlawful and even if the correction does not have any ground for invalidation in the patent proceeding after the correction.

(2) According to the records, with respect to the patented invention of this case, whose name is "dysives of hydrobrology and combustion prevention materials manufactured using the same," the plaintiff filed an objection on December 12, 1998 against the patent establishment registration under the name of the plaintiff (patent number omitted), Korea Chemical Co., Ltd. on June 30, 199. On January 15, 200, the plaintiff filed a request for correction of the reduced contents of the patent claim Nos. 1 and 6 of this case on September 22, 2000. The examiner's board reduced some of the elements of the patent claim before the correction request to the plaintiff on September 22, 200. Thus, it is recognized as legitimate claim under Article 77 of the former Patent Act, and the corrected claims of this case cannot be accepted from inventions described in the publication before the application for the patent of this case, but the examiner's decision to revoke the patent claim No. 1 to the plaintiff on September 15, 2000.

(3) In fact-finding, although the above decision of revocation was rendered as if the correction was formally reasonable, in substance, it became a result of rejection of the correction request. In light of the above legal principles, the decision of revocation was erroneous in violation of the mandatory provisions, without giving the board of examiners an opportunity to submit a written opinion, and if the board of examiners deemed that the correction request satisfies all the requirements for correction, it was erroneous in violation of the decision of patent maintenance instead of the decision of revocation of the corrected claim. However, although the court below erred in its determination that the decision of revocation was justifiable on the ground of the above circumstances, the court below erred in the misapprehension of legal principles as to the correction request in the patent objection, and the allegation in the grounds of appeal pointing this out is justified.

2. Conclusion

Therefore, without further examining the remaining grounds of appeal, the judgment of the court below is reversed without further review, and this case is sufficient to be tried directly by the court, and since the illegality prior to the decision of revocation cannot be corrected, this case is decided directly by the court. The decision of the Korean Intellectual Property Tribunal on October 31, 2001 rendered on the case No. 200965 on October 31, 200 is unlawful, and it is so decided as per Disposition with the assent of all participating Justices who reviewed the appeal that the defendant will bear the total costs of the lawsuit.

Justices Lee Hong-hoon (Presiding Justice)