The criteria for determining the identity of an invention under Article 29(3) of the former Patent Act with respect to the expanded earlier application

Article 29(3) of the former Patent Act (amended by Act No. 7871 of March 3, 2006)

Supreme Court Decision 2010Hu2179 Decided April 28, 201 (Gong2011Sang, 1074)

New Ethz Engineering A. Baz. (Patent Attorney Na Young-hwan et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 201Heo1729 Decided April 18, 2012

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

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

In a case where a party’s failure to prove, due to negligence or misunderstanding, or in a case where there is no explicit dispute between the parties as to the matter to be a issue, the court shall actively exercise its right of explanation and urge the parties to provide evidence or give them an opportunity to state their opinions. Therefore, if a court, on the ground of a legal point of view that a party was not aware of or was not expected of the party at all, if one of the parties was to be in a imprudented situation, such failure to perform his/her duty of explanation is illegal (see Supreme Court Decision 2010Hu2773, Dec. 9, 2010).

However, in this case, the arguments in the grounds of appeal, which the court below should have given the defendant an opportunity to state his opinion, do not constitute a case where the defendant should exercise his right to state his opinion as above. In addition, in light of the process of litigation in the court below as shown in the records, the defendant should be deemed to have given a substantial opportunity to state his opinion as to the matters as alleged in the court below. Thus, the court below did not err by failing to exhaust all necessary deliberations or by failing to state his opinion due to

2. As to the grounds of appeal Nos. 2 through 4

The identity of an invention as prescribed by Article 29(3) of the former Patent Act (amended by Act No. 7871, Mar. 3, 2006; hereinafter the same) regarding an expanded earlier application is distinguishable from the inventive step, and the technical composition of both inventions is identical, and the effects of the invention are also considered. Even if the difference is different from the technical composition, if the difference is merely an addition, deletion, or modification of widely known and commonly used technology, and it is merely an insignificant difference that does not generate new effects, both inventions are substantially identical. However, if the difference exceeds the aforementioned degree, if the difference between the technical composition of both inventions exceeds the aforementioned, it cannot be said that both inventions are identical (hereinafter referred to as “ordinary technician”) even if the difference is within the scope easily derived by a person with ordinary knowledge in the art to which the invention pertains (hereinafter referred to as “ordinary technician”).

In light of the aforementioned legal principles and the records, the composition of Paragraph 1 (hereinafter “instant Claim 1”) of the scope of claims stated in the Correction Statement as amended on October 31, 2011 with respect to the instant patent invention (patent number No. 86908) using the name as “point-of-point device” was installed in the vicinity of the modified part of protruding and breaking. However, in the response structure of the instant Claim 1, the composition of the instant Claim 1 is not different from the installation of the unless it is occupied in the form of a shot or shot in the form of a shot in the form of a shotning to the extent that it is necessary to prevent any difference in the form of a shot in the form of a shotning to the extent that it is difficult to view such difference in the form of a shot in the form of a shotning to the extent that it is necessary to prevent any change in the form of a shotning to the extent that it is difficult to view such difference in the form of a s project.

The court below is just in its conclusion that the correction invention of Paragraph (1) of this case and the comparison invention of this case are not identical, and it is not erroneous in the misapprehension of legal principles as to the identity of the invention under Article 29 (3) of the former Patent Act, contrary to the allegations

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.

Justices Kim Chang-suk (Presiding Justice)