[1] The standard for determining the identity of an invention under Article 29(3) of the former Patent Act as to an expanded earlier application

[2] The case affirming the judgment below which held that the combination or separate operation of a server constitutes a general technical common sense and does not have any new effect, and since the composition of a Phone-to-Phone method which selects a direct counter phone location without using a watcher, among the elements of the patented invention, which is "a voice Internet transmission system", such as "the audio Internet transmission system, not via a server separate from a watcher," and the composition of "the transmission of an Internet package oil", etc., was partly different from the corresponding inventions, these inventions are practically identical to those of the comparable inventions

[1] Article 29 (3) of the former Patent Act (amended by Act No. 5329 of Apr. 10, 1997) / [2] Article 29 (3) of the former Patent Act (amended by Act No. 5329 of Apr. 10, 1997)

[1] Supreme Court Decision 98Hu1013 delivered on June 1, 2001 (Gong2001Ha, 1537) Supreme Court Decision 2002Hu44 delivered on October 27, 2004, Supreme Court Decision 2006Hu1452 Delivered on March 13, 2008

A-Link system business, ANC (Patent Attorney Lee Young-soo et al., Counsel for the defendant-appellant)

Defendant (Patent Attorney Song-ho et al., Counsel for the defendant-appellant)

Patent Court Decision 2010Heo470 decided October 6, 2010

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

The grounds of appeal are examined.

1. Determination as to the identity of an invention under Article 29(3) of the former Patent Act (amended by Act No. 5329, Apr. 10, 1997; hereinafter the same) with respect to an expanded earlier application shall be based on whether the technical composition of the two inventions is identical, and the effects of the invention shall also be taken into account. Even if the technical composition differs, if the difference is merely a degree of absence of a new effect due to addition, deletion, modification, etc. of widely known and commonly used technologies, the two inventions shall be deemed substantially identical (see Supreme Court Decisions 98Hu1013, Jun. 1, 2001; 2006Hu1452, Mar. 13, 2008, etc.).

2. According to the reasoning of the lower judgment, the lower court determined to the effect that: (a) compared to the comparable inventions as indicated in the judgment of the lower court, the composition 1-1, 8-3, and 49 of the instant Claim No. 49 (hereinafter “Claim No. 49”, and the other claims also indicated in the same manner) of the instant patent invention named “a voice Internet transmission system” (registration No. 84735) and the comparable inventions as indicated in the judgment of the lower court, the composition 1-1, 1-3, and 8 of the instant Claim No. 49 are identical to each other of the comparable inventions; and (b) in the case of 1-B, the number 1-2, the transmission and audio engine means are not linked to the server, such as the exhauster, and it is partly different from the comparison invention’s response in that the integrated or separate operation of the server constitutes a general technical formula, and it does not have new effect as a result, and it is substantially the same with the cited Invention No. 52565 or 5744.

In light of the above legal principles and records, the above judgment of the court below is just and acceptable, and there is no error in the misapprehension of legal principles as to the identity of invention under Article 29 (3) of the former Patent Act or the violation of the rules of evidence, as alleged in the grounds of appeal

3. 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 Shin Young-chul (Presiding Justice)