The purpose of Article 42(4)1 of the Patent Act and the standard for determining whether the requirements for specification under the above provision are satisfied.

Article 42(4)1 of the Patent Act provides that a claim shall be supported by a detailed description of the invention, in which case the matters to be protected are stated in the claim(s). This purpose is to prevent unjust outcomes granted to an invention not disclosed to the applicant by entering the matters not described in the detailed description of the invention(s) attached to the patent application(s) in the claim(s). Accordingly, whether the patent application satisfies the above specification requirements under Article 42(4)1 of the Patent Act should be determined by whether the matters corresponding to the claim(s) described in the patent application(s) are indicated in the detailed description of the invention(s) from the person having ordinary knowledge in the technical field to which the invention pertains (hereinafter “ordinary technician”) based on the level of technology at the time of patent application in conformity with the aforementioned provision’s purport at the time of patent application(s). As such, as otherwise stated in Article 42(3)1 of the Patent Act, it shall not be clearly and clearly determined by the detailed description of the invention(s).

Article 42(3)1 and (4)1 of the Patent Act

Supreme Court Decision 2010Hu2582 Decided October 13, 2011 (Gong2011Ha, 2381)

Qualcomm Incorporated (Patent & Patent & Patent & Patent & Patent & Patent & Patent & Patent & Law & Law & Law & Law & Law & Law Office No. 4 others, Counsel for defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 201Heo2480 decided February 3, 2012

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

The grounds of appeal are examined.

Article 42(4)1 of the Patent Act provides that a claim shall be supported by a detailed description of the invention, in which case the matters to be protected are stated in the claim(s). This purpose is to prevent unjust outcomes granted to an invention not disclosed to the applicant by entering the matters not described in the detailed description of the invention in the specification attached to the patent application. Therefore, whether a patent application satisfies the aforementioned specification requirements under Article 42(4)1 of the Patent Act shall be determined by whether a person with ordinary knowledge in the technology field to which the invention pertains (hereinafter “ordinary technician”), based on the level of technology at the time of the patent application in conformity with the aforementioned provision’s purport, is included in the detailed description of the invention(see, e.g., Supreme Court Decision 2010Hu2582, Oct. 13, 2011). The determination of whether a person with ordinary knowledge in the technology field to which the invention pertains, as if Article 42(3)1 of the Patent Act differing the purport of the provision, should not be made easily in the detailed description.

According to the reasoning of the judgment below, the court below determined that there was no error of entry contrary to Article 42 (4) 1 of the Patent Act, since the elements corresponding to the composition of the "a code to determine the status of the transmitted pulse" as stated in paragraph (8) of the patent claim of the invention of this case (application number omitted) using the name "high data radar" are identical to the detailed description of the invention, the above composition is supported by the detailed description of the invention.

In light of the above legal principles and records, the above determination by the court below is just, and contrary to the allegations in the grounds of appeal, there were no errors of misapprehending the legal principles on Article 42 (4) 1 of the Patent Act, failing to exhaust all necessary deliberations, or omitting judgment.

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 Jo Hee-de (Presiding Justice)