Method of determining the inventive step of an invention / Whether it can be determined ex post facto by a person with ordinary skills on the premise that he/she knows the technology disclosed in the specification of the invention subject to the determination of inventive step (negative)

In determining the inventive step of an invention, at least the scope and content of prior art, and the difference between the prior art and the prior art, and the technological level of a person with ordinary skill in the art to which the invention pertains (hereinafter “ordinary technician”), based on evidence and other records, shall be examined on the basis of whether the invention subject to the determination of inventive step differs from the prior art in light of the technical level at the time of patent application, and whether the person with ordinary skill can easily make an invention from the prior art, even though there is a difference between the prior art and the prior art at the time of patent application. In such cases, the determination of whether the invention subject to the determination of inventive step can be made easily by the person with ordinary skill on the premise that the person with ordinary skill knows the technology disclosed

Article 29(2) of the Patent Act

Supreme Court Decision 2006Hu138 Decided August 24, 2007 (Gong2007Ha, 1486), Supreme Court Decision 2007Hu3660 Decided November 12, 2009 (Gong2009Ha, 2112), Supreme Court Decision 2014Hu2184 Decided November 25, 2016 (Gong2017Sang, 47)

Press Co., Ltd. (Patent & Patent Attorney Lee Jae-soo et al., Counsel for the defendant-appellant)

Defendant (Law Firm L&A Patent Attorney Ba-ho et al., Counsel for the defendant-appellant)

Patent Court Decision 2015Heo7254 decided August 11, 2016

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

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

1. In determining the inventive step of an invention, at least the scope and content of prior art, the difference between the invention subject to the determination of inventive step 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 examined based on the evidence and other records. In such cases, even if the invention subject to the determination of inventive step differs from the prior art at the time of patent application, whether the person having ordinary skill can overcome such difference and easily make an invention from the prior art, even though the invention subject to the determination of inventive step differs from the prior art at the time of patent application. In such cases, it shall not be determined ex post on the premise that the person having ordinary skill is aware of the technology described in the specification of the invention subject to the determination of inventive step (see, e.g., Supreme Court Decisions 2006Hu138, Aug. 24, 2007; 2014Hu2184, Nov. 25, 2016).

2. We examine the above legal principles and the evidence duly admitted by the court below.

A. The name of the invention of this case (patent number omitted) filed by the Defendant and registered in the patent application is “Abstin plants for organized use.” In the registration invalidation trial of this case, the patent claim No. 1 (hereinafter “instant Claim No. 1”) corrected on May 9, 2014 refers to the invention as to “abstin plants for organized use at the time of surgery to be organized or to be performed by inserting it into the spon the spon, spon and spon the spon the spon and spon the spon the spon the spon the spon on the surface and the above spon the spon on both sides of the spon on the surface, combining the two parts, combining them with the sp on the sp on the upper part, thereby achieving the organization and the surrounding part of the sp on the sp on the sponspon.

B. Meanwhile, the prior inventions in the lower judgment do not have the means to resolve the task of the special nature of the corrective invention of this case where “the foregoing room is connected so that the bals can be combined with the foregoing room and the bals can be combined with the two parts,” and “the bals in the face of the bals in the face.” Moreover, the composition corresponding to the 1st invention of the prior inventions and the 3rd joints in the prior inventions does not include the “bals in the face.” The composition corresponding to the 4rd joints in the prior inventions does not include the “bals in the face of the bals in the face of the bals in the face of the bals in the face of the bals in the face of the 2nd inventions and the 4th joints in the face of the prior inventions, and it is difficult to achieve the 1stal in the process by forming the bals in the inserting body or the part of the instant corrective body.”

Prior inventions have a professional idea to support the body of the human body by the composition corresponding to the absence of a mersh link connected to the body of the human body, etc., and there is a clear difference from the professional idea of the correction invention of this case intending to take the body of the human body into “one direction.” Such prior inventions would lose the technical meaning of the prior inventions and make it difficult for ordinary technicians to easily think of it. In addition, in this case where no such implication or motive is presented in the prior inventions, unless it is determined ex post facto on the premise that the contents of the instant corrective invention are already known, the said composition of the instant corrective invention of this case cannot be easily derived through the combination of the prior inventions or the prior inventions. Accordingly, the nonobviousness of the instant corrective invention of this case cannot be denied by the prior inventions.

C. However, the court below interpreted 2 of the amendment invention of this case as "the heading direction of a room for inserting the body in the two parts of the absence of a mersh was formed in one direction." The part in the description of the amendment invention of this case stating "the heading direction is forming one direction" as "the heading direction is not known or the technical scope of the claim 2 of the amendment invention of this case cannot be determined." The part in the description of the amendment invention of this case stating "the heading direction is forming one direction" can be viewed as related to the amendment invention of Paragraph 4 of this case, which states "the heading direction is protruding in the surface towards a certain direction." Therefore, although the reasoning of the court below's determination on this part is inappropriate, it is justifiable to conclude that the nonobviousness of the amendment invention of this case of this case of this case is not denied. In conclusion, contrary to what is alleged in the grounds of appeal, the court below did not err by misapprehending the legal principles on the judgment

3. Conclusion

The Plaintiff’s appeal is dismissed as it is without merit, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Lee Dong-won (Presiding Justice)