[1] The limitation of the scope of a patent right in a case where the claim of a patented invention is written in the form "a method with a characteristic that includes any component"

[2] Legislative intent of Article 42 (4) 2 of the Patent Act requiring "the invention must be clearly and concisely described" to the claim of the patented invention

[3] The meaning of Article 42 (4) 3 of the Patent Act demanding that "it shall be stated only in the matters indispensable for the composition of the invention" as the claim for a patented invention

[4] In applying Article 42(3) of the Patent Act, whether a doctoral degree thesis, which was put into a public library, etc., is a publicly known literature that can easily be understood by ordinary technicians (affirmative)

[5] Whether non-obviousness is not denied as a matter of course on the ground that the scope of a claim contains a part of an independent claim which does not deny non-obviousness, or a claim which is converted into another composition, most of the elements of an independent claim (negative)

[1] In a case where the claim of a patented invention is indicated in the form "a method with a characteristic "including any component", there is no change in the circumstance that the claim of the patented invention includes all elements that are not specified in the claim of the patented invention even if it is implemented by adding all elements that are not specified in the claim of the patented invention, and such practice falls within the scope of the right of the patented invention, and furthermore, the claim mentioned in the above form is expected to fall within the scope of the patent right of the patented invention, and it is also expected that the claim is implemented

[2] The purport of Article 42 (4) 2 of the Patent Act requiring "the invention shall be clearly and concisely stated" in the claim for a patented invention is to allow only a clear description in light of the provisions of Article 97 of the same Act, and a term of expressing the composition of the invention is not allowed in principle. Furthermore, in light of the fact that the interpretation of the claim is made by reference to the detailed description, the scope of the claim is not allowed to make claims obscure, such as using terms different from the definition of terms defined in the detailed description.

[3] Article 42 (4) 3 of the Patent Act demanding “the invention must be described only with matters indispensable for the composition of the invention” in the claim of the patented invention cannot be asserted as including as stated in the patent claim, since it did not state all the elements necessary for the composition of the invention after the patent for the patent for the invention filed, as well as cannot be asserted as including as stated in the patent claim, since all the elements specified in the claim must be understood as an essential element, and it cannot be asserted as not an essential element on the ground that some elements do not fall short of their importance.

[4] Article 42(3) of the Patent Act intends to clarify the technical content and scope of the invention claimed in the patent application to be protected as a patent right by disclosing its contents to a third party easily known only with the specification. Thus, it refers to the extent that a person with ordinary skill can understand the invention accurately and accurately without adding special knowledge in light of the technical level at the time of the application in accordance with the specification, and at the same time, it can be reproduced. The doctoral degree paper can understand the contents of the invention in a state where the general public can recognize its contents in a public library or university library, and it can be understood that a person with ordinary skill can understand its contents without adding excessive and special knowledge.

[5] A claim which omits a part of the claim(s) or is converted into a different one cannot be seen as a dependent claim notwithstanding its form of description. Thus, even if there are circumstances that the nonobviousness of an independent claim is not denied by an invention publicly known prior to the application, a claim which omits a part of its independent claim(s) or is converted into a different one cannot be viewed as non-obviousness by an invention publicly known prior to the application(s) even if most of the elements of the independent claim exist.

[1] Articles 42(4) and 97 of the Patent Act / [2] Article 42(4)2 of the Patent Act / [3] Article 42(4)3 of the Patent Act / [4] Article 42(3) of the Patent Act / [5] Articles 29(2) and 42(4) of the Patent Act, Article 5(1) of the Enforcement Decree of the Patent Act

[3] Supreme Court Decision 2004Hu3553 Decided September 30, 2005 / [4] Supreme Court Decision 2000Hu1689 Decided September 6, 2002 (Gong2002Ha, 2449), Supreme Court Decision 2004Hu3362 Decided November 25, 2005 (Gong2006Sang, 60), Supreme Court Decision 2004Hu387 Decided June 27, 2006 (Gong2006Ha, 1442) / [5] Supreme Court Decision 2004Hu3546 Decided November 10, 2005 (Gong205Ha, 190)

Plaintiff (Law Firm Barun, Attorneys O Jong-soo et al., Counsel for the plaintiff-appellant)

Co-litigants (Patent Attorney Shin Sung-sung et al., Counsel for the plaintiff-appellant)

Korean Microfaw Ltd. (Law Firm Square, Attorneys Kim Jong-soo et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2002Heo956 delivered on August 14, 2003

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

1. Determination on the grounds of appeal as to the lack of entry

A. Interpretation of Article 42 of the Patent Act

(1) As to the form and interpretation of the claim

In a case where the claim of a patented invention is indicated in the form "a method with a characteristic that includes any component", the circumstances that include all the elements indicated in the claim of the patented invention even if an additional work is conducted with an element that does not include all the elements indicated in the claim of the patented invention do not change. Thus, such implementation is not only within the scope of the right of the patented invention, but also within the scope of the patent right of the patented invention. Furthermore, the claim described in the aforesaid form is anticipated not only to include the elements explicitly indicated but also to include other elements

(2) As to Article 42(4) of the Patent Act

Article 42(4) of the Patent Act provides that a claim that intends to be protected shall be one or more claims, and that claim shall fall under each of the following subparagraphs. It shall be interpreted as follows. First, claim 1 requires "the scope of a patent shall be supported by a detailed description." From the standpoint of a person who has ordinary knowledge in the art related to the invention (hereinafter referred to as "ordinary technician") on the basis of the technical level at the time of the patent application, the meaning of claim is that it shall be able to clearly understand the composition or combination of claims and effect of claims only by the description as it is consistent with each of the detailed description in the scope of claims (see Supreme Court Decision 2002Hu2051, Aug. 22, 2003; Supreme Court Decision 2004Hu362, Nov. 25, 2005). It shall be interpreted that the definition of the invention is not clearly and clearly stated in the scope of claims, and thus, it shall not be interpreted as an invention defined in the scope of claims.

(3) As to Article 42(3) of the Patent Act

Meanwhile, Article 42(3) of the Patent Act provides that the detailed description of the invention shall state the purpose, composition, and effect of the invention to the extent that it can be easily implemented by a person who has ordinary skill. The purpose is to clarify the technical content and scope of the invention to be protected as a patent by disclosing its contents to a third party easily known only with the specification. Thus, a person who has ordinary skill can understand the invention accurately and at the same time, without adding special knowledge in light of the technical standard at the time of application according to the specification (see, e.g., Supreme Court Decisions 9Hu2477, Jul. 23, 199; 2004Hu362, Nov. 25, 2005). Since a doctor’s degree of doctoral degree is placed in a state where the general public can recognize the contents of the invention (see, e.g., Supreme Court Decisions 95Hu1959, Jun. 14, 196; 200Hu869, Nov. 26, 2009).

B. Determination in the instant case

(1) In light of the above legal principles and records, the invention of paragraphs (1) and (17) of this case, among the claims for patent of this case (registration No. 123403), named "Korea-U.S. automatic conversion method" (registration No. 123403), is described as the "Korea-U.S. automatic conversion method with a characteristic consisting of certain stages and stages," and all of the inventions of this case are expected to be implemented by adding other elements than the elements explicitly stated. Further, the patented invention of this case does not have a purpose or effect of improving data management, storage, and control processes, and it is not favorable in determining patent requirements by including the above process as one of the elements of patent claims, but is limited to narrow scope of rights or the above process without stating the scope of rights as the elements of patent claims, and thus, it depends on the applicant's intent and judgment. Thus, even if the patent invention of this case was adopted, it is not always recognized that the patent applicant's execution process of the patented invention of this case is not necessarily a violation of No. 4 of the Patent Act.

(2) Furthermore, prior to the fact that each claim of this case of the patented invention of this case is scheduled to be implemented by adding other elements in working the patented invention of this case. On the other hand, the adoption of the patented invention of this case, which requires the automatic conversion of Korean and English copied, is likely to include the process of storing, managing, and controlling data in working the patented invention of this case by either preparing a program or implementing such a program on a computer. However, in this case where it is difficult to find the circumstance that a person with ordinary skills should implement the patented invention of this case by preparing a program in addition to the above process is required to add special knowledge or undergo an excessive experiment in light of the level of technology at the time of the application, it cannot be said that the above process was not written in the detailed description of the invention, and therefore there is no specification contrary to Article 42 (3) or (4) 1 of the Patent Act.

(3) In addition, the term "the stage in which a term is entered" in the patented invention of this case is the same as that of the prior art so it does not require any special explanation. Thus, the omission of the explanation cannot be made. As to "the stage in which words and the investigation are separated from" in the specification of the patented invention of this case, the description of the patented invention of this case shall be cited in the description of the patented invention of this case and explain it. Thus, insofar as it is acknowledged that the above dissertation was entered into the Seoul National University Library and published, it cannot be understood without adding excessive experiments or special knowledge to ordinary technicians. Thus, in this case where there is no special circumstance that the specification of the patented invention of this case does not seem to have violated Article 42(3) of the Patent Act merely because the description of the patented invention of this case is explaining the contents of claims by citing the doctor's degree thesis, it cannot be said that the detailed description of the patented invention of this case violates Article 42(3) of the Patent Act, and it cannot be said that the specification of the patented invention of this case does not provide any solution to the above problem.

(4) Furthermore, even if the string code of a key entered in the English package is a can code corresponding to the investigation of Korean language, it is not difficult for a technician to recognize it as an investigation of Korean language. On the other hand, the detailed description of the invention is to explain the contents of claims and the drawings attached to the specification can show only one of the examples executed to assist the understanding of the patented invention. Thus, even if the contents of the drawing show only a part of the examples of the implementation indicated in the detailed description of the invention, it cannot be readily concluded that an ordinary technician cannot implement the invention. Thus, it cannot be said that the above circumstances are inconsistent with Article 42(3) of the Patent Act.

(5) In addition, inasmuch as the invention of this case takes the form of description that can be carried out by adding other technologies than the elements explicitly stated in the claim, even if the detailed description or drawings of the invention of this case show "a stage of separating a short language and an investigation," which is not indicated in the claim, such circumstance alone does not necessarily lead to the said Claim of paragraphs 17 through 22 being supported by a detailed description.

(6) Thus, although the judgment of the court below to the same purport is somewhat insufficient in its reasoning, it is just in its conclusion and there is no error in the misapprehension of legal principles as to the omission of entry as otherwise alleged in the ground of appeal.

2. Determination on the grounds of appeal on inventive step

A. As to the description of the claim and the judgment of inventive step

In a case where an ordinary technician cannot easily make an invention by the invention publicly known before the application, and the inventive step is not denied, a dependent claim embodying the independent claim by citing its independent claim or its dependent claim by limiting or adding it to it, as a matter of course, shall not be denied in an invention of the same publicly known claim (see Supreme Court Decision 94Hu1657 delivered on September 5, 1995). However, a claim omitting part of a claim's composition or converting it into another composition cannot be viewed as a dependent claim regardless of its description form (see Supreme Court Decision 2004Hu3546 delivered on November 10, 205). Even in a case where there are circumstances that an independent claim is not denied by the invention publicly known prior to the application, even if there are most elements of the independent claim, the nonobviousness cannot be denied as a matter of course by the invention previously known.

On the other hand, where the description of the claim(s) of a patented invention alone is not sufficient to determine the technical composition or it is impossible to determine the technical scope, the technical scope or the scope of the patent as a whole should be substantially determined by supplementing the other parts of the specification such as the detailed description of the invention or the drawing(s) (see Supreme Court Decisions 90Hu1499, Nov. 26, 1991; 2003Hu113, Feb. 13, 2004).

B. Determination in this case

(1) The lower court determined that the nonobviousness of the instant Claim 1 invention is not denied by the inventions publicly known prior to the filing of the patent application of the instant patent invention, and determined that the nonobviousness of the instant Claim 2 through Claim 16 invention is not denied as a matter of course as a dependent claim of the instant Claim 1 invention, and furthermore, the instant Claim 17 invention also contains both the principal elements of the instant Claim 1 invention and is not denied as it falls under the subordinate claim of the instant Claim 1, and its nonobviousness is not denied as it is substantially included in the partial phase, and the instant Claim 18 through 22 invention is subordinate claim of the instant Claim 17 invention.

(2) In light of the above legal principles and records, since the invention of Paragraph 17 of this case omitted the "second phase separating the term from the word "the word "the second phase" into investigation", it cannot be deemed as a subordinate claim to Paragraph 1 of this case even if all the remaining elements of Paragraph 1 of this case are included. Thus, even if the inventive step is not denied by the publicly known inventions prior to the application, it cannot be said that Paragraph 17 of this case's invention does not deny inventive step by the above publicly known inventions. However, since Paragraph 1 invention of this case and Paragraph 17 of this case's invention of this case are hard to clearly determine their scope of right due to the reasons such as the specific function or action, it is difficult to determine their scope of right by considering the detailed composition of Paragraph 1 of this case's invention of this case's invention and Paragraph 17 of this case's invention of this case's invention of this case's invention of this case's invention of this case's invention of this case's 17 of this case's invention of this case's non-obviousness, etc.

3. Conclusion

Therefore, the appeal is dismissed, 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 on the bench.

Justices Kim Nung-hwan (Presiding Justice)