[1] The meaning of "the same invention" under Article 11 (1) of the former Patent Act

[2] In a case where both inventions compared to the application of Article 11(1) of the former Patent Act are “an invention of a product” and “an invention of a method”, whether the mere fact that the scope of invention differs from each other can be determined immediately that they are not identical inventions (negative)

[3] The case holding that paragraph (1) of the claim scope of the patented invention, "besylate salt of amlodipine" and Paragraph (1) of the claim scope of the earlier application invention, "the method of manufacturing besylate salt of amlodipine with the characteristic of recovering besylate salt of amlodipine after reactioning amlodipine sulphopic acid or its amlodipine salt with the characteristics of recovering besylate salt of amlodipine after reactioning amlodipine sulphine acid or its amlodipine salt with the characteristics of recovering besylate salt of amlodipine from the reaction of amlodip

[1] Article 11(1) (see current Article 36(1) and (2)) of the former Patent Act (wholly amended by Act No. 42307, Jan. 13, 1990) / [2] Article 11(1) (see current Article 36(1) and (2)) of the former Patent Act (wholly amended by Act No. 42307, Jan. 13, 1990) / [3] Article 11(1) (see current Article 36(1) and (2)) of the former Patent Act (wholly amended by Act No. 42307, Jan. 13, 1990)

[1] Supreme Court Decision 84Hu30 decided Aug. 20, 1985 (Gong1985, 1247) Supreme Court Decision 90Hu1154 decided Jan. 15, 1991 (Gong1991, 754) / [2] Supreme Court Decision 89Hu148 decided Feb. 27, 1990 (Gong190, 776) Supreme Court Decision 2005Hu3017 decided Jan. 12, 2007 (Gong2007Sang, 310)

Plaintiff Co., Ltd. (Attorney Kim Jong-hwan et al., Counsel for the plaintiff-appellant)

Assistant Participating Co., Ltd. and one other (Patent Attorney Noh Jae-chul et al., Counsel for the defendant-appellant)

Defendant (Attorneys Son Ji-yol et al., Counsel for the defendant-appellant)

Patent Court Decision 2006Heo7498 Decided June 13, 2007

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

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

1. Article 11(1) of the former Patent Act (amended by Act No. 42307 of Jan. 13, 1990; hereinafter the same) provides that a patent shall be granted to the same invention only for the best application, and adopts a seafarer's attention to prevent duplicate registration of the identical invention. "The same invention is identical" means not only the case where the technical composition fully coincides, but also the case where there are partial differences in the scope partially, barring special circumstances. Although there are differences in the composition of both inventions, if it is merely a change to the extent ordinarily recruited by a person with ordinary knowledge in the technical field, but it does not cause any special difference in the purpose and effect of the invention, both inventions are also the same invention (see Supreme Court Decisions 84Hu30 of Aug. 20, 1985; 90Hu1154 of Jan. 15, 1991).

In addition, as a premise for applying Article 11(1) of the former Patent Act, in determining whether two inventions are identical to each other, the substance of the two inventions compared should be compared and judged depending on whether they are different depending on the form of expression. Thus, just because two inventions compared to each other are different in the scope of invention as an invention of a product and a method, it cannot be determined immediately that they are not identical inventions (see Supreme Court Decisions 89Hu148, Feb. 27, 1990; 2005Hu3017, Jan. 12, 2007).

2. According to the records, paragraph (1) of the claims of the instant patent invention (patent number 91020, date of application August 5, 1987) (hereinafter “paragraph (1) invention of this case”) is “besylate salt of amlodipine” (patent number 90479, date of application April 4, 1987, date of publication, November 30, 1987), and the claims of the earlier application invention of this case (patent number 90479, date of application, November 30, 1987) (hereinafter “paragraph (1) invention of the earlier application of this case”) can be seen as the same description of the invention in detail as “the method of manufacturing besylate salt of amlodipine with the characteristics of recovering besylate salt of amlodipine after reactioning amlodipine from among the sulphine sulphine mphines or its amlodin salt.”

In comparison with two inventions in light of the records, the two inventions are identical in that they contain besylate salt of amlodipine generated by the reaction of amlodipine and amlodipine acid. On the other hand, the invention of paragraph (1) of this case is an object invention and the patent application invention of paragraph (1) of this case is an invention of a method, and the patent application invention of paragraph (1) of this case is an invention of a method, compared to the invention of paragraph (1) of this case, an invention of paragraph (1) of this case is different in that measures are added after the reaction of "besylate salt" to recover besylate salt.

The difference between the Claim 1 invention and the Claim 1 invention in the earlier application of this case is examined. While the Claim 1 invention of this case and the Claim 1 invention in the earlier application of this case are different in the scope of invention as an invention of a product and a method, it is difficult to readily conclude that the two inventions are not identical inventions immediately on the ground that the scope of invention is different.

Moreover, the generation of salt can only be made out of the solvents, and if the solvent causes a chemical reaction with the raw materials, it can not be obtained, so it is an insulable solvent which does not cause a chemical reaction with any one of the raw materials, the solvent constitutes a self-consuled formula with a person with ordinary knowledge in the technical field to which the invention pertains (hereinafter “ordinary technician”). Therefore, in the instant earlier-application patent application paragraph (1) invention of this case, it cannot be said that there is a technical meaning in stating that only a person with ordinary knowledge in the technical field to which the invention pertains (hereinafter “ordinary engineer”).

Next, the chemical compounds generated through the reaction of the ionion and acid of salt is an ordinary skilled person. The invention of paragraph (1) of the earlier application of this case merely states that "after reaction of amlodipine with sulphulphphone acid, recovery of belodipine salt" is characterized by "belodipine recovery" and no other detailed technology or method is indicated in the invention of paragraph (1) of the earlier application of this case. Thus, there is no particular technical meaning in stating that "belodipine is recovered" in the invention of paragraph (1) of the earlier application of this case.

Therefore, if two inventions are compared to ascertaining the substance of the professional engineer and comparing it, they are identical in that they are contents of bedylate salt of amlodipine generated by the reaction of amlodipine and beeutic acid. Although there are some differences in these inventions, it is nothing more than a simple category difference or a change to the extent that ordinary technicians can ordinarily employ it, but it cannot be said that there is a special difference in the operating effect of the invention. Thus, it is correct to view the Claim 1 invention of this case and Claim 1 invention of earlier- claimed patent application of this case as the same invention.

In addition, Article 3 of the former Patent Act (amended by Act No. 3891 of Dec. 31, 1986), which was enforced at the time of the filing of the earlier application of this case, provides that "the invention of a material that can be manufactured by chemical methods" shall be an unpatentable invention under Article 3 of the former Patent Act (amended by Act No. 3891 of Dec. 31, 1986), and even if the defendant was unable to file an application for a patent with the invention of a material "besylate salt of amlodipine" at the time, such circumstance does not affect the determination of the identity of the invention of paragraph

Furthermore, the inventions of paragraphs (2) through (11) of this case are subordinate claims directly or indirectly cited the inventions of this case, and are merely simply adding (no dispute exists between the parties) widely known and commonly used manufacturing techniques stated and used in the pharmaceutical textbook, etc. prior to the filing of the patent application of this case, and thus, are identical to the inventions of paragraph (1) of this case. Thus, the inventions of paragraphs (2) through (11) of this case and paragraph (1) inventions of the earlier-used patent application of this case are identical inventions of this case on the grounds as seen in paragraph (1) inventions of this case.

Thus, the patented invention of this case is identical to the patented invention of this case and is registered in violation of the seafarerism under Article 11(1) of the former Patent Act. Thus, the patented invention of this case should be invalidated under Article 69(1) of the former Patent Act.

The judgment of the court below to the same purport is just, and there is no error of law as to the identity of invention 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 Kim Young-ran (Presiding Justice)