[1] The method of using and interpreting the terms indicated in the specification of the patented invention

[2] The case holding that, in light of the definition of the terms in the detailed description of the patent invention as to the "product that is a product that continuously favorable for a probin which is a probin in a biological aspect," the "Oil" which is the composition of the patent invention in paragraphs (1) and (3) of the patent invention shall be interpreted as "in a liquid state from the upper and upper temperature with the structure of Triglyceral d, or in a liquid state from the body temperature of the animal body," and that the "Ouccoin" of the patent invention in the patent claim of paragraphs (1) and (3) of the patent invention having such meaning and the "Ouccoin of the challenged invention" of the patent invention cannot be deemed as the same composition because it has a substantial difference between its type, form, and structure, and therefore the invention in question does not fall under the scope of the patent right of the patent claim

[3] The measures to be taken by the Intellectual Property Trial and Appeal Board where the invention in question is not specifically specified to the extent that the invention in question can be compared with the patented invention in a claim for a trial to confirm the scope of a patent right of the patented invention

[4] The case holding that the invention in question specified as the invention of a product does not specify it to the extent that it can be compared with the patented invention in the method of use

[1] The term used in the specification of a patent shall be used in a common sense that it has, at the same time, in uniform using it through the entire specification, but if it is intended to use it in a specific meaning, it is permissible to define and use it. Therefore, if the term is defined in the specification, it is sufficient to interpret it accordingly.

[2] The case holding that, in light of the definition of the terms in the detailed description of the patent invention as to the "product that is a product that continuously favorable for a probin which is a biologically active element", the "Mil" which is the composition of the patent invention in paragraphs (1) and (3) of the patent invention shall be interpreted as "it has the structure of Trigly Liber and is in liquid state from the upper temperature, or is in liquid state from the bodily temperature of the animal body," and that the "Mil" of the patent invention in paragraphs (1) and (3) of the patent invention in this meaning and the "hinccop tower" of the challenged invention in this context cannot be deemed as the same composition because it has a substantial difference between its type, form, and structure, and therefore, the invention in question does not fall under the scope of the patent right of the patent invention in paragraphs (1) and (3) of the patent

[3] In filing a claim for a trial to confirm the scope of a patent right, the invention subject to the confirmation must be specifically identified to the extent that it can be compared with the patented invention in question. Although it is not necessary to describe in whole the specific composition of the subject matter for the specific purpose, at least the specific composition of the part corresponding to the elements of the patented invention should be stated to the extent that it is necessary to determine differences compared with the elements of the patented invention, and if the challenged invention is not clearly specified to the extent that it can be compared with the patented invention, the Korean Intellectual Property Tribunal shall order correction of the specification and drawings of the challenged invention to the extent that it does not change the substance.

[4] The case holding that the invention in question specified as the invention of a product is not specifically specified to the extent that it can be compared with the patented invention in the method of use

[1] Article 42(2) of the Patent Act / [2] Article 135 of the Patent Act / [3] Articles 135, 140, and 141 of the Patent Act / [4] Article 135 of the Patent Act

[1] Supreme Court Decision 97Hu990 delivered on December 22, 1998 (Gong1999Sang, 229) / [3] Supreme Court Decision 99Hu2372 delivered on August 21, 2001 (Gong2001Ha, 2116), Supreme Court Decision 2003Hu656 delivered on April 29, 2005 (Gong2005Sang, 868)

Montreal City Cambodia (Attorneys Lee Im-soo et al., Counsel for the plaintiff-appellant)

El brancha Co., Ltd.

Elbio Science Co., Ltd. (Attorneys Choi Young-mo et al., Counsel for the defendant-appellant)

Patent Court Decision 2001Heo6834 delivered on January 9, 2004

The part of the lower judgment regarding (patent number omitted) patent claims Nos. 1 and 3 is reversed, and that part of the case is remanded to the Patent Court. The remainder of the Defendant’s successor’s appeal is dismissed.

1. As to whether the challenged invention falls under the scope of right under paragraphs (1) and (3) of the patent claim of the patented invention of this case

A. The judgment of the court below

The court below determined that the patent invention of this case (patent Nos. 1) is an invention of this case with a specific description of 3'the term 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'I' of the 'the 'the 'the 'the 'the 'the 'the ' the 'the ' the 'the 'the 'the 'the 'I' of the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'I' of the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the ' is'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the '.

B. Judgment of the Supreme Court

However, we cannot accept the above judgment of the court below.

(1) The term used in the specification of a patent shall be used in a common sense that it has, at the same time, in combination with the specification. However, if it is intended to use any term in a specific sense, it is permissible to define and use it. Thus, if the term is defined in the specification, it is sufficient to interpret it accordingly (see Supreme Court Decision 97Hu990 delivered on December 22, 1998).

(2) According to the above legal principles and records, the term "days 1 and 3 inventions of this case" as part of their composition, and the term "days 1" in the detailed description of the patented invention of this case is defined separately as "days 2" in the scope of claims by stating that the term "days 2" in the context of the patented invention of this case means regional or animal body temperature ... It refers to the word that "days 2" in the art to which the patented invention of this case belongs is different from chemical properties, but it is also classified as animal milk, plant milk, light, synthetic milk, etc., and it is desirable to classify the two different kinds of glycerine 1 in terms of glycerine 1 in terms of the structure of glycerine 2 in terms of glycerine clycerine 1 in terms of the composition of the patented invention of this case, and it is also desirable to interpret the term "day 1 in terms of glycerine 2 in terms of the composition of glycer or glycer 2 in terms of the regional m.

Furthermore, in comparison with the 'Milty' of the Claims 1, 3 of this case and the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the' of the Claim 1, 3 of this case and the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the ' of the Claim 1, 3 of this case' of the challenged invention, the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the ' of the Claim 1, 3 inventions of this case' of this case, it is difficult to view the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the 'the '

Nevertheless, the court below determined otherwise. The court below erred by misapprehending the legal principles on the interpretation of the scope of claims, which affected the conclusion of the judgment, and the ground of appeal pointing this out has merit.

2. As to whether the challenged invention falls under the scope of right under paragraph (19) of the claim for patent of the patented invention of this case

A. The court below held that the claim 19 (19) of the patented invention of this case (hereinafter referred to as the "claim 19 (the invention of this case") of this case is an invention of a thing, since the invention of this case is an invention of a method with the summary of administering the invention of this case into an animal by means of injection, and the scope of protection of the invention of a method is an act using such method. Thus, the claim 19 (19) invention of this case has an effect only by administering the invention by the means of injection. Thus, the invention of this case does not specify to the extent that the challenged invention of this case is able to prepare for it. Thus, in the trial of this case, the court below determined that the claim 19 (hereinafter referred to as the "claim 19 (the invention of this case") of this case requested a specific correction to the extent that it can be compared with the claim 19 (the invention of this case, and where the correction is not possible or it should have

B. In filing a request for a trial to confirm the scope of a patent right, the challenged invention must be specifically identified to the extent that it can be compared with the patented invention in question. Although it is not necessary to state in whole the specific composition of the subject invention for the specific purpose, at least the specific composition corresponding to the elements of the patented invention should be stated to the extent that it is necessary to determine differences in comparison with the elements of the patented invention, and if the challenged invention is not clearly specified to the extent that it can be compared with the patented invention, the Korean Intellectual Property Tribunal shall order correction of the specification and drawings of the challenged invention to the extent that it does not change in the summary (see, e.g., Supreme Court Decisions 9Hu2372, Aug. 21, 2001; 2003Hu656, Apr. 29, 2005).

According to the above legal principles and the records, the explanatory note of the challenged invention submitted by the defendant while claiming a trial to confirm the scope of passive scope of a patent right includes all the compositions, compositions, use methods, and manufacturing methods. However, the patented invention of this case consists of separate claims between the compositions of the patented invention of this case and the method of manufacturing, and the defendant has consistently asserted that the challenged invention of this case has a difference between the compositions of the patented invention of this case and its composition and effects, it is reasonable to see that the challenged invention of this case is specified as an invention of this case, and the use methods or manufacturing methods stated in the explanatory note of the challenged invention of this case cannot be deemed to constitute part of the challenged invention of this case. Thus, the challenged invention of this case constitutes a case where the specific composition corresponding to the method of use, which is an element of the patented invention of this case, is not indicated.

Therefore, the above recognition and determination of the court below is just [it is possible to judge whether the invention in question constitutes an indirect infringement under Article 64 subparagraph 2 of the former Patent Act (amended by Act No. 3891 of Dec. 31, 1986) in the same case, but it is just to find that the court below did not specify the invention in question to the extent that it can be compared with the invention in this case, as alleged in the ground of appeal.]

3. Therefore, the part concerning claims 1 and 3 of the patented invention of this case among the judgment below is reversed, and that part of the case is remanded to the court below for a new trial and determination, and the remaining appeal by the defendant succeeding intervenor is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Shin Hyun-chul (Presiding Justice)