[1] In a lawsuit seeking the revocation of a trial decision rejecting a request for a trial against a decision of rejection, where the Korean Intellectual Property Office claims that the decision of rejection was not judged in the trial decision as the grounds for the decision of rejection and the new grounds for rejection are different, whether the court may deliberate

[2] The case holding that the court may not deliberate and decide on an invention for the use of a medicine on the ground that, if the grounds for rejection of the pharmacological effect are different in detail from the claims of the Korean Intellectual Property Office in the trial decision and the revocation lawsuit, the applicant's submission of opinions and correction may change in the methods of the grounds for rejection, the Korean Intellectual Property Office's assertion that the grounds for rejection and new grounds for rejection

[1] Even in a lawsuit seeking the revocation of a trial decision rejecting a request for a trial against a decision of rejection, the Korean Intellectual Property Office may assert and prove the grounds for legitimate conclusion of a trial decision, unless the grounds for the decision of rejection and other new grounds for rejection are different, and the court may deliberate and determine the grounds for the decision of rejection and use them as the basis for the decision, except in extenuating circumstances to the contrary. However, the grounds for the decision of rejection and the new grounds for rejection that are different from those for the decision of rejection cannot be deliberated and determined in the lawsuit

[2] The case holding that the court may not deliberate and decide on an invention for the use of a medicine on the ground that, if the grounds for rejection on the pharmacological effect are different in detail from the claims of the Korean Intellectual Property Office in the trial decision and the revocation lawsuit, the applicant's submission of opinion and amendment may change in the methods of the grounds for rejection, the Korean Intellectual Property Office asserts that the grounds for rejection and another new grounds for rejection are different

[1] Articles 42(3), 63, and 186 of the Patent Act / [2] Articles 42(3), 63, and 186 of the Patent Act

[1] Supreme Court Decision 2001Hu1617 delivered on February 26, 2003 (Gong2003Sang, 937) Supreme Court Decision 2002Hu1102 Delivered on October 24, 2003, Supreme Court Decision 2004Hu356 Delivered on July 22, 2004

Plaintiff (Patent Attorney Park Chang-hee, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

may 23, 2006

1. The decision made by the Intellectual Property Tribunal on April 30, 2005 on the case No. 2003 Won4652 shall be revoked;

2. The costs of lawsuit shall be borne by the defendant.

The same shall apply to the order.

1. Basic facts

A. Application invention of this case

(1) Invention name: An invention made by means of anti-frativity, a product made by means of manufacturing, and a drug containing the product.

(2) Date/application number: June 14, 2000/ 2000-32752

(3) The scope of claims (the final amendment on September 17, 2002)

1. Claim 13 through 17, high ginseng 13 through 17, high ginseng 13 through 10, yellow oil 6 through 12, yellow oil 8 through 12, white light 13 through 17, yellow oil 8 through 12, yellow oil 8 through 12, yellow oil 13 through 17, and anti-bracked products, including white light lives;

2. Claims;

(i) cutting the casualties 13 to 17 weight points, high 3 to 17 weight points, yellow 8 to 10 weight points, yellow 8 to 12 weight points, yellow 13 to 17 weight points, yellow 8 to 12 weight points, yellow 13 to 17 weight points, blank 13 to 17 weight points, and white 8 to 12 weight points, and then cutting the extraction machine with 7 to 8-eight weight points, and then cutting the extraction amount obtained by extracting twice twice from 100° for 100 to 2 hours, and making it into singing.

(ii) a process in which a person has selected and cut it short, then put it in the extraction machine and put 7 to 8 times weighted so as to impose double extractions twice from 100°C for 100°2 hours, and then draw up the extractions obtained by double extractions, respectively; and

(iii)the manufacturing method of anti-frated single products, including the process referred to in (i) and (ii) above, of mixing vegetable vegetable vegetables obtained from the process.

3. Claim 3. The drug containing the 13-17 weight register of casualties, high ginseng 13-17 weight register, yellow 6-10 weight register, yellow 8-12 weight register, white ray 13-17 weight register, yellow 8-12 weight register, yellow 13-17 weight register, yellow 13-17 weight register and 8-12 weight register.

(4) Applicant: Plaintiff

B. The procedural background

(1) On July 29, 2002, the Korean Intellectual Property Office notified the grounds for rejection on the ground that the creation cost of the elements of the claim 2-(i) was not indicated, and that the description of the claims does not meet the requirements under Article 42(4) of the Patent Act. On September 17, 2002, the Plaintiff submitted an amendment and written opinion to amend the claims. On April 18, 2003, the Korean Intellectual Property Office again notified the grounds for rejection on the ground that the detailed description of the invention in the patent application in this case does not meet the requirements under Article 42(3) of the Patent Act because the detailed description of the invention in this case did not indicate the pharmacological effect and objective clinical experiment data and did not meet the requirements under Article 42(3) of the Patent Act. However, on June 10, 2003, the Korean Intellectual Property Office submitted the written opinion and written test report on the ground that it did not address the above grounds for rejection on October 29, 2003.

On November 28, 2003, when the plaintiff filed a petition for a trial on appeal against a decision of refusal with the Intellectual Property Tribunal, the Intellectual Property Trial and Appeal Board (2003 Won4652) tried to dismiss the plaintiff's petition on the grounds as follows (2) on April 30, 2005.

(2) Summary of the trial decision of this case

The detailed description of the patent application invention of this case states that "the effect of the patent application of this case is to protect the skin and damper, to defend the skin, to be satisfy, to be satisfyed, to be satisfyed, to prevent or satisfying the chlosat, tone, tone, tone, tone, and to satisfy theme, etc.," but the detailed description does not state specific pharmacological effect data proving such effect, so the detailed description of the patent application invention of this case is not stated to the extent that a person with ordinary

Although the claimant asserts that specific and objective pharmacological effect data is clearly indicated in the detailed description of the invention, it is not sufficient to prove "the effect of preventing or defending the skin slickness and habits, which is excellent in salting, external habiting, slickness, slickness, and slickness, etc.," it is not sufficient to prove "the effect of preventing or defending the skin slickness and slickness, which is excellent in the process of clinical trials or animal tests," it is necessary to specify the dose, administration methods, etc. and include more specific pharmacological effect data through clinical trials or animal tests, etc., and thus, the claimant's assertion is not reasonable.

Therefore, the patent application invention in this case is not clearly indicated in the detailed description of the invention in the specification to the extent that a person with ordinary knowledge in the technical field to which the invention pertains (hereinafter referred to as “satisfic person”) can easily perform, and thus is contrary to the provisions of Article 42(3) of the Patent Act, and thus, the said decision of refusal

[Evidence] The non-contentious facts, Gap evidence 1 through Gap evidence 6, the purport of the whole pleadings

2. The parties' assertion

A. Summary of the grounds for revoking the trial decision asserted by the plaintiff

(1) Experimental 1 written in the detailed description of the invention claimed in the instant application contains the test result that the test institute, the test per capita, and the reduction rate of 9.9%, and the test result 2 written in detail the administration method that is attached to the skin, and the volume of dosages per unit area of 4.5m per unit area. As such, the detailed description of the instant application invention clearly states the pharmacological effect.

(2) Since the claim(s) of the invention(s) of this case is written in the form of “B”, namely, the form of open-end claims, and the detailed description of the invention can include further organic compounds, including Metrokeras, it shall be interpreted that the product created in the patent application(s) of this case can include other organic compounds, in addition to the biochemical compound(s) of 8 kinds as described in the patent application(s), it shall be interpreted that the product created in the patent application(s) of this case is being claimed as one of the claims(s) of this case(s) 1. (hereinafter “ Claim(s)(s) of this case(s) of this case’s patent application(s). If the detailed description of the invention contains a quantitative description only the pharmacological effect of one of the invention(s) of the invention(s) of this case’s claim(s) of this case’s patent application(s).

(3) If it cannot be deemed that the detailed description of the instant Claim No. 1 invention contains the pharmacological effect of the instant Claim No. 1 invention because it could not be recognized as the executing form of the instant Claim No. 1 invention, it constitutes the grounds for decision of refusal and the instant decision of trial was made on the grounds for other grounds for rejection. The instant decision of trial contains procedural errors since the applicant did not fully provide the applicant with an opportunity to present his opinion on the other grounds for rejection.

B. Summary of the defendant's assertion

(1) The examples and the experiments described in the detailed description of the invention in the application of this case are the execution and the results of the experiment on the anti-bratian products containing the anti-bratosis widely known as the anti-bratant products. The test results are merely based on the anti-bratant effect of the air-braturr, the publicly known air-bratur, and the test results (Evidence A No. 8) cannot be known about what the active ingredients are, and even if a prisoner of war is recognized as a prisoner of war manufactured in the same manner as that of the patent application of this case, the test results are also caused by the bratur's anti-bratant effect. Thus, the test results that can prove the raturity of the invention in the application of this case are not entirely indicated in the detailed description of the invention in this case.

(2) The invention of Paragraph (1) of this case must limit the essential composition of the Hanbagrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgr

(3) The defendant's assertion that an opportunity to submit a written opinion to the applicant is to be limited to cases where the grounds for rejection and other grounds for rejection are found to be substantially different. The defendant's argument that the effect of pharmacological is not recognized because the composition of the Claim No. 1 invention of this case and the composition of the art is different from that of the invention of this case, and that the summary effect of the Claim No. 1 invention of this case is not stated in the detailed description of the invention of this case. Thus, the defendant's argument does not constitute a new ground for rejection.

(4) Therefore, the decision of refusal is justifiable, since the invention of this case violates the provisions of Article 42(3) of the Patent Act.

3. Determination

A. Whether the defendant can assert a new ground for rejection that was not determined by the trial decision of this case

(1) Article 62 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001; hereinafter the same) provides that an examiner shall make a decision of refusal in cases where a patent application constitutes the prescribed grounds for rejection, and Article 63 of the same Act provides that an examiner shall notify the patent applicant of the grounds for rejection and give him/her an opportunity to submit a written opinion within a specified period when he/she intends to make a decision of refusal pursuant to Article 62. Article 170 (2) of the same Act provides that Article 63 shall apply mutatis mutandis to cases where he/she finds the grounds for the decision of refusal and other grounds for rejection in a trial against the decision of refusal. Since these provisions are so-called mandatory provisions, the grounds for the rejection of the request for a trial against the decision of refusal are consistent with the grounds for the decision of refusal at least, and where an examiner finds another grounds for rejection in a trial against the decision of refusal, he/she shall give him/her an opportunity to submit a written opinion on the new grounds for rejection (see Supreme Court Decision 2007Hu1, 2701.

As above, the purport of granting an opportunity to submit a written opinion lies in: (a) in determining whether an invention subject to a patent refers to the creation of a highly new technical idea using the law of nature, and thus, whether an invention constitutes an invention eligible for a patent is highly specialized and cannot be equipped with such knowledge because it requires a high level of expertise; (b) thus, preventing any error arising therefrom; and (c) promptly rejecting a patent application without giving the applicant an opportunity to correct any error that may arise from the seafarerism system by explaining that the applicant is too harsh to the applicant (Supreme Court Decision 98Hu515 delivered on May 29, 2001).

(2) In addition, even if a trial decision has not been decided, the parties can properly assert and prove the conclusion of the trial decision or the grounds for illegality in the trial decision revocation procedure, and the court may deliberate and decide the grounds without any special circumstances and make them the basis for the judgment (Supreme Court Decision 2000Hu1290 Decided June 25, 2002).

(3) In full view of the above-mentioned (1) and (2), even if the Korean Intellectual Property Office in a lawsuit seeking the revocation of a trial decision dismissing a request for a trial against a decision of rejection was not determined by a trial decision, the Korean Intellectual Property Office may assert and prove the grounds for legitimate conclusion of a trial decision, unless the grounds for the decision of rejection and other new grounds for rejection are considered different, and the court may conduct a trial and make a decision without limitation and use them as the basis for the judgment, unless there are any special circumstances to the contrary, but it is not determined by a trial decision as the grounds for the decision of rejection and other new grounds for rejection cannot be deliberated and determined in the lawsuit seeking the revocation of the trial decision (see Supreme Court Decision 2001Hu1617, Feb.

B. Whether the Defendant asserts a new ground for rejection that was not determined in the instant trial decision

First of all, we will examine the grounds for rejection of the application invention of this case cited by the decision of rejection and the decision of this case.

On April 18, 2003, if the examiner of the Korean Intellectual Property Office collected the purport of the entire pleadings in Gap evidence Nos. 2 and 6, and Gap evidence Nos. 8, he notified the examiner of the ground of rejection that "the detailed explanation of the invention of this case is without any specific and objective clinical test data to prove the preventive and treatment effect of the invention of this case, such as salt effect, in particular candideofy, melt germs, register germs, yellow domination, and yellow do not satisfy the requirements under Article 42 (3) of the Patent Act, since the specific and objective clinical test data are not stated, the examiner of the Korean Intellectual Property Office presented a written opinion and test report to the effect that the plaintiff contained the pharmacological effect in the detailed explanation of the invention of this case, and that the examiner of the Korean Intellectual Property Office did not remove the effect of the invention of this case on the ground that the plaintiff's rejection ruling of this case was not sufficient to prove the effect of the reduction in the extraction effect of the invention of this case on the ground that the plaintiff's rejection ruling of this case did not contain.

According to the above facts, the notification of the reasons for rejection, the decision of refusal, and the main reasons for rejection in the trial decision of this case are that the invention of this case violates Article 42 (3) of the Patent Act because the detailed description of the invention of this case does not contain the specific and objective clinical experiment data to prove the pharmacological effect of the invention of this case.

However, the defendant brought a lawsuit in this case. If the composition of the 1 invention in the specification of the invention in this case, which is described in the detailed description of the invention in this case, was the composition of the 1 invention in this case where the metroke is not added, the 1 invention in the usage invention of medicine can be deemed as a form suitable for the quantitative pharmacological effect required to be described in the detailed description of the invention in the specification. However, the 1 invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's invention in this case's article 42 (3) of the Patent Act's invention in this case's invention in this case's invention in this case's invention is legitimate.

Therefore, I would like to examine whether the Defendant’s new ground for rejection in the instant lawsuit was not determined in the trial decision as the ground for rejection as to the instant patent application invention and the new ground for rejection as a new ground for rejection.

① The grounds for rejection as to the invention of this case in the above notification of the reasons for rejection, decision of refusal, and the trial decision of this case and ② The above reasons for rejection as to the invention of this case asserted by the defendant litigation of this case are not different in that the invention of this case is in violation of Article 42(3) of the Patent Act because there is no quantitative pharmacological data about the pharmacological effect in the specification. However, the detailed contents are as follows: ① the test is limited to the extent that the invention of this case cannot be deemed a quantitative pharmacological data about the pharmacological effect, regardless of what the composition is the subject product, so there is no quantitative pharmacological data about the pharmacological effect in the specification of the invention of this case; ② the test 1 can be deemed a quantitative pharmacological effect, but the composition of this case is not the one for the invention of this case, and there is no difference in the quantitative material about the pharmacological effect of the invention of this case in the specification of this case.

However, in light of the fact that the reason to notify the applicant of the reason for refusal is that the applicant can resolve the reason for refusal by giving the opportunity to present his opinion and the opportunity to correct the opinion (Articles 47 and 170(1) of the former Patent Act), the applicant should be deemed to have failed to be determined by the trial decision as a new reason for refusal, i.e., the reason for the refusal, ii) in light of the fact that the contents or amendment of the applicant's opinion concerning the reason for refusal can completely change, i.e., the reason for the refusal, ii) i., the reason for the refusal, i.e., the reason for the refusal, i., the applicant, i., the new reason for the refusal, i.e., the applicant has to submit the summary data when submitting the opinion that there is sufficient quantitative pharmacological data about the pharmacological effect, and thus, the applicant has to submit the written opinion about the reason for rejection on April 18, 2003, or to interpret the claim 1 in addition to the claim 2.

Ultimately, the defendant asserts that the patent registration of the patent invention of this case should be refused, and that it is not judged in the trial decision as the ground for rejection and another new ground for rejection, and this court cannot deliberate and decide on it.

C. Whether the decision of this case was unlawful

On the other hand, as seen earlier, the Defendant recognized that the experiment 1 itself is a form suitable for quantitative pharmacological effects required to be stated in the detailed description in the invention of medicinal use in the specification. As seen earlier, as seen earlier by the instant trial decision, the grounds for rejection of the instant patent application invention are not justifiable, and thus, the instant trial decision is unlawful.

4. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is reasonable, and it is so decided as per Disposition with the assent of all participating Justices.

Judges Choi Sung-sung (Presiding Judge)