In a case where the reason for a trial ruling dismissing a ruling of rejection is consistent with the reason for a ruling of rejection, whether to notify the new reason for rejection and give an opportunity to submit a written opinion (negative)

According to Articles 62, 63 and 170(2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001), which provide for the rejection ruling and the notification of reasons for rejection of a patent application, the patent applicant shall be given an opportunity to submit a new written opinion on the grounds for rejection by notifying the patent applicant of the grounds for rejection in a trial against rejection ruling if he/she discovers the grounds for rejection different from that of the rejection ruling. However, if the grounds for rejection of the trial against the rejection ruling conforms to the purport of the rejection ruling, it cannot be deemed that the decision was made for a new reason different from that of the rejection ruling. Thus, even in such a case, the patent applicant shall be notified of the new grounds for rejection and

Articles 62, 63, and 170(2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

[Plaintiff-Appellant] Plaintiff 2001Hu2757 delivered on October 10, 2003 (Gong2003Ha, 2195)

Intecoca (Patent Attorney Park Jong-chul et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2005Heo6177 Decided June 2, 2006

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

First, we examine the first and second grounds for appeal.

Article 62 of the former Patent Act (amended by Act No. 6411, Feb. 3, 2001; hereinafter the same) provides that an examiner shall make a ruling of rejection if the patent application constitutes a prescribed reason for rejection, and Article 63 of the same Act provides that an examiner shall notify the patent applicant of the reason for rejection and give him an opportunity to submit a written opinion within a specified period when he/she intends to make a ruling of rejection under Article 62. Article 170(2) of the same Act provides that Article 63 of the same Act shall apply mutatis mutandis where he/she finds another reason for rejection in a trial against a ruling of rejection. This provision is a so-called mandatory provision, and where an examiner finds another reason for rejection in a trial against a ruling of rejection, he/she shall notify the patent applicant of the reason for rejection and give him/her an opportunity to submit a written opinion on the new reason for rejection. However, if the reason for rejection of a ruling of rejection conforms to that of the ruling of rejection, it cannot be deemed that the patent applicant has made a new decision for rejection.

Examining the facts established by the court below and the record, the Plaintiff’s claim 8 of the instant invention named as “influence using a ginging license” was at the time of the patent application, “a device with specific features including a medium that contains an order to detect a moving of users’ image on the surface,” and the examiner, with respect to the instant invention, stated “the claim 8 of the instant invention is not deemed to have all essential elements, and is in violation of Article 42(4) of the Patent Act, because the relationship between essential elements is unclear,” and the Plaintiff’s claim 8 of the instant invention as stated in “the claim of the patent application is on the surface of the computer on the surface and contains a medium that contains an order to detect the moving of users on the surface of the image,” and the patent examiner did not specifically state the grounds for rejection that “the patent application of the instant invention is in violation of Article 42(4) of the Patent Act, and it constitutes a separate and abstract method to detect all the elements of the patent application by stating that “the aforementioned method of rejection is not clear and definite.”

If there are circumstances, the reason for rejection ruling and the reason for the trial ruling cannot be deemed to coincide with the detailed contents of expression, but both are consistent with each other with the main purport that Article 42 (4) 2 of the former Patent Act is violated due to the uncertainty of the elements that constitute the invention, and the reason for the trial ruling cannot be deemed to be a new reason for rejection that provides the plaintiff with an opportunity to submit a separate opinion. Thus, the Korean Intellectual Property Tribunal cannot be deemed to be a new reason for rejection that the trial ruling notified the plaintiff of the same reason as the ground for the trial ruling and did not provide the plaintiff with an opportunity to submit

Nevertheless, the court below did not examine well whether the grounds for the ruling and the grounds for the ruling of rejection are consistent with each other in its main purport, and concluded that the reasons for the ruling are the grounds for the ruling and the new grounds for rejection, and held that the ruling of rejection is unlawful without giving an opportunity to submit a written opinion, on the ground that the two are merely different from the detailed contents of the ruling, and that the ruling of rejection maintained the ruling of rejection without giving an opportunity to submit a written opinion. The judgment of the court below is erroneous in the misapprehension of law as to the application of the interpretation of Articles 63 and 17

Therefore, without further proceeding to decide on the remaining grounds of appeal, 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 Kim Young-ran (Presiding Justice)