[1] Whether an example of practice shall be always stated in order to meet the specification requirements under Article 42(3) of the former Patent Act (negative), and in a case where an invention expressing only the scope of elements by numerical value only has no particular technical features and thus, an ordinary technician can properly select and implement such numerical value, and the reason or effect of numerical value definition is not stated in the specification, whether it violates Article 42(3) of the former Patent Act (negative) (negative)

[2] The case holding that in case where Gap et al. filed a claim for a trial for invalidation of registration with respect to Gap's patented invention "the fuel additives improved the smoke efficiency", and Eul et al. did not meet the specification requirements under Article 42 (3) of the former Patent Act, it cannot be deemed that there was any lack of specification even if the specification of the patented invention does not include specific reasons or effects as to numerical limitation or it did not include specific examples in the specification of the patented invention

[3] The purpose of Article 42(4)1 of the former Patent Act and the standard for determining whether a claim(s) stating the matter to be protected is supported by a detailed description of the invention

[4] In a case where Gap's patent invention "a fuel additives improved the smoke efficiency" refers to Gap's patent invention, and Eul et al.'s dependent claim citing the claim(1) of the patent invention does not satisfy the "to be supported by the detailed description of the invention" as provided by Article 42(4)1 of the former Patent Act, the case holding that the court below erred in the misapprehension of legal principle in holding that there was no error in the misapprehension of legal principle on the ground that there was no error in the matters corresponding to the claim(s) stated in the patent claim(s) for other reasons, without being based on whether

[1] Even if the specification does not contain an example of practice according to the nature, technical content, etc. of the invention in question, it is easy for a person of ordinary skill to accurately understand and reproduce the invention. Thus, it is not necessary to record the example of practice at all times in order to meet the specification requirements under Article 42(3) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007; hereinafter “former Patent Act”). In addition, in the case of an invention whose numerical limitation is limited to the numerical limitation, it is intended to present the proper scope of practice, form, etc. of the invention. If the numerical limitation is merely a simple numerical limitation that can be appropriately selected and implemented by a person of ordinary skill because there is no particular technical feature, even if there is no indication or effect on such numerical limitation, it is possible for a person of ordinary skill to accurately understand and reproduce its meaning without an excessive experiment or special knowledge. In such case, even if there is no reason or effect on such numerical limitation, it cannot be deemed to violate Article 42(3) of the former Patent Act.

[2] The case holding that in case where Gap et al. filed a claim for a trial for invalidation of registration with respect to Gap's patented invention "the fuel additives improved the smoke efficiency", and where Eul et al. failed to meet the specification requirements under Article 42 (3) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007), it cannot be deemed that there was the above specification of the above patented invention on the grounds that in light of all the circumstances, there was no error in the description of the patented invention on the grounds that the specific reason or effect of numerical limitation is not stated in the specification of the patented invention, or even if there was no specific example, it is possible to accurately understand and reproduce it without any excessive experiment or special knowledge.

[3] Article 42(4)1 of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007) provides that a claim(s) that intends to be protected shall be supported by a detailed description of the invention. The purport of the provision is to prevent an unfair result of grant of a patent right to an invention not disclosed to the applicant by entering matters not described in the detailed description of the invention in the specification attached to the patent application in the claim(s). Thus, whether a claim is supported by a detailed description of the invention should be determined by the detailed description of the invention(s) based on the technological level at the time of the patent application.

[4] The case holding that in case where Gap et al. filed a claim for a invalidation trial on the patent invention "A, which is a subordinate claim citing the claim(1) of the patent invention citing Eul et al., which is a subordinate claim citing the claim(s) of the patent invention, the court below erred by misapprehending legal principles since the detailed description of the patent invention of the above subordinate claim is identical to that of the claim(s) in light of all the circumstances, since the detailed description of the patent invention of the above subordinate claim is written in the same manner as that of the claim(s), since it is supported by the detailed description of the invention(s) and it is not based on the detailed description of the invention(s) 1 of Article 42(4) of the former Patent Act(amended by Act No. 8197 of Jan. 3, 2007).

[1] Article 42 (3) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007) / [2] Article 42 (3) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007) / [3] Article 42 (4) 1 of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007) / [4] Article 42 (4) 1 of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007)

[3] Supreme Court Decision 2004Hu1120 decided May 11, 2006 (Gong2006Sang, 1070), Supreme Court Decision 2004Hu776 decided October 13, 2006 (Gong2006Ha, 1936)

Plaintiff (Law Firm Cheongjin, Attorneys Transferred-hee et al., Counsel for the plaintiff-appellant)

Defendant 1 and one other (Patent Attorney Yellow-chul, Counsel for the defendant-appellant)

Patent Court Decision 2010Heo357 decided August 18, 2010

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

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

1. As to the ground of appeal on Article 42(3) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007; hereinafter the same)

A. Article 42(3) of the former 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 with ordinary knowledge in the technical field to which the invention pertains (hereinafter “ordinary technician”). This aims at clarifying the technical content and scope to be protected as a patent right by disclosing the contents of the invention so that a third party can easily understand them only by the specification only. Thus, the degree of description required in the above provision refers to the extent that an ordinary technician can understand the invention accurately by the description without considering excessive experiments or special knowledge as at the time of application and at the same time, even though it does not include excessive experiments or special knowledge as at the same time (see Supreme Court Decisions 2004Hu362, Nov. 25, 2005; 2003Hu2072, Nov. 24, 2006). Thus, it is difficult for the person with ordinary skill to recognize the contents of the invention to be implemented within the scope of the invention as well as its detailed description itself without any specific description or detailed description.

B. We examine in light of the above legal principles.

(1) According to the records, Article 1 (1) of the claim(1) of the patented invention (registration number No. 54568) of this case (hereinafter referred to as "claim(1) invention of this case," and other claims are also indicated in the same manner) of the patent invention of this case (hereinafter referred to as "fuel(1) invention of this case") with the name "fuel(s) improved efficiencies" is an invention containing 446-1710 : 406-1710: 885-2928: 52-2943 : 562-2543 : the composition cost of each component consisting of fuel additives is limited to the numerical value. The specification of the patented invention of this case does not state specific reasons for or effects of the numerical value setting of the creation cost, but in relation to this, it can only state that "the kind and quality of fuel, the situation of operation of street(s) and the development cost of old age can be adjusted according to the system and degree of age."

However, according to the specification of the patented invention of this case, paragraph (1) invention of this case presented the range of cost of creation appropriate for executing the patented invention of this case, not just because there is no particular technical feature in itself, and it seems that it presented the range of cost of creation appropriate for an ordinarily skilled person to properly select and implement the patented invention of this case, and it merely provides a simple numerical limit to the extent that ordinary skilled person can properly select and implement the patented invention of this case. Accordingly, even if the detailed reasons or effects of the numerical setting of cost of the patented invention of this case are not specified in the specification of the patented invention of this case as seen above, if the numerical setting of cost of this case does not include any specific reasons or effects as to the numerical setting of numerical values of the patented invention of this case, it can be understood that the numerical setting of cost of the patented invention of this case can not be justified if it is an ordinarily skilled person without any specific knowledge or significance.

(2) Meanwhile, considering the meaning of the term “EA”, which is one of the components of the instant Claim 1’s fuel additives, as well as the fact that “EA” written in the specification of the instant patent invention, “EA, etc. to respond to the roof and prevent the response of glycerine and glycerine,” it shall be interpreted that all of the Mono No. EA (MEA), di Ethalian (DEA), and Ethalian (TEA) included in the specification of the instant patent invention.

그런데 이 사건 특허발명 명세서의 위 기재와 ‘용해도를 높이고 수산화나트륨의 부식성을 방지하기 위해 에탄올아민을 사용한다’, ‘본 발명은 에탄올아민 등의 아민계열 안정제로 과산화수소를 안정시키며’, ‘수산화나트륨은 pH가 높아 부식성이 크므로 아민계열 안정제로 보완하였으며’ 등의 기재 및 기록에 나타난 이 사건 특허발명 출원 당시의 기술상식을 종합해 보면, 이들 3가지 종류의 에탄올아민은 모두 아민계열 안정제의 일종으로서 과산화수소를 안정시키고 수산화나트륨의 부식성을 방지하며 용해도를 높여 붕사 등의 응고를 방지하는 동일한 역할을 하는 것이고, 다만 암모니아(NH₃)의 수소를 치환한 히드록시에틸 라디칼(-CH₂CH₂OH)의 개수가 1개, 2개 및 3개로 차이가 있는 것일 뿐임을 알 수 있다. 따라서 이 사건 특허발명의 명세서에 이들 에탄올아민의 전부 또는 일부를 조성성분으로 한 연료첨가제의 구체적인 실시례가 기재되어 있지 않더라도, 통상의 기술자로서는 이들 에탄올아민의 위와 같은 역할 및 히드록시에틸 라디칼의 개수 차이를 감안하여 과도한 실험이나 특수한 지식을 부가하지 않고서도 이 사건 제1항 발명을 정확하게 이해하고 재현할 수 있다고 할 것이다.

(3) In addition, the invention of paragraph (1) of this case is an invention of fuel additives. Unlike the invention of a chemical reaction, it is the technical content that each of its constituent elements is mixed with the appropriate development cost. It is not only the substance that has been widely known about its chemical structure or characteristics, but also the description of the patented invention of this case includes the role of performing each of its constituent elements in the invention of paragraph (1) of this case (Ahrasium contains the role of promoting combustion stability, the prevention of corrosion of hydrogen, the improvement of the degree of solution, the removal of the roof slurry, the prevention of corrosion, etc.). Thus, even if the detailed examples of the patented invention of this case are already stated in the specification of the patented invention of this case, it seems that there seems to be any difficulty in describing the invention of this case without any specific description and formula of paragraph (1) of this case.

(4) Ultimately, the specification of the instant patent invention cannot be deemed as having failed to state any violation of Article 42(3) of the former Patent Act with respect to each of the above matters.

C. Nevertheless, the lower court determined that there was a lack of entry in violation of Article 42(3) of the former Patent Act in relation to the instant Claim 1 and the instant Claim 2, (3), (5), (6), (8), and (11) inventions, which are subordinate claims citing the instant Claim 1 and the instant Claim 2, (3), (5), (6), (8), and (11) on the grounds that the numerical limitation on the formation cost of each ingredient, which constitutes the fuel additives of the instant Claim 1, did not indicate the grounds for or effects of the numerical limitation on the formation cost of each ingredient, and that there was no specific implementation example. In so doing, the lower court erred by misapprehending the legal doctrine as to the specification requirements under the foregoing provision, thereby adversely affecting the conclusion of the judgment.

2. As to the ground of appeal on Article 42(4)1 of the former Patent Act

A. Article 42(4)1 of the former Patent Act provides that a claim shall be supported by a detailed description of the invention. The purport of Article 42(4)1 of the former Patent Act is to prevent an unreasonable result granted to an invention not disclosed by the applicant by entering matters not described in the detailed description of the invention in the specification attached to the patent application in a claim. The issue of whether a claim is supported by a detailed description of the invention shall be determined by whether, from the ordinary technician’s position at the time of the patent application, the matters described in the claim are described in the detailed description of the invention (see, e.g., Supreme Court Decisions 2004Hu1120, May 11, 2006; 2004Hu7766, Oct. 13, 2006).

B. We examine in light of the above legal principles.

According to the records, the inventions in paragraphs (3), (5), and (11) of this case are dependent claims citing each of the inventions in paragraph (1) of this case. The invention in paragraph (3) of this case is composed of "fuel additives containing carbon calium or calcium additionally," and paragraph (5) of this case is composed of "fuel additives containing calcium, calcium or calcium". The invention in paragraph (11) of this case added "fuel which controls NOx by inducing calcium mixed carbon calcium," and the detailed description of the patented invention in this case contains "the removal effect or height of heat and air pollutants by adding ......." The invention in this case includes additional alcium, calcium, calcium, or calcium," and "the invention in this case contains ..........., it can be seen that it is equivalent to the composition of the invention in this case by mixing it with carbon calcium in this case."

C. Nevertheless, the court below held to the effect that each of the above inventions violates Article 42 (4) 1 of the former Patent Act, on the ground that the scope of the right is too wide since the limitation on the weight of ingredients added to each of the above elements added to the invention in paragraphs (3), (5), and (11) of this case is not limited, without examining whether the matters corresponding to the claims are stated in the detailed description of the invention. In this regard, the court below erred by misapprehending the legal principles on the requirements for specification as stipulated in the above provision, which affected the conclusion of the judgment. The ground of appeal pointing this out has merit.

3. Conclusion

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 Ahn Dai-hee (Presiding Justice)