[1] Criteria to determine whether “the scope of a patent claim is substantially expanded or modified” under Article 47(4)1 of the former Patent Act

[2] In a case where the Korean Intellectual Property Office examiner made a decision of rejection on the ground of the detailed description of the invention and the lack of the description of the claim concerning the invention for the patent application filed by Gap, whose name "to walk on both sides and below," and subsequently Gap filed a petition for a trial on objection against the decision of rejection, but the Korean Intellectual Property Office rejected the amendment, the case holding that the judgment of the court below that the patent application claim 6 of the invention for the patent application for the patent application after the amendment did not substantially alter the patent application, but it was erroneous in the misapprehension of legal principles without comparing the entire patent claim before and after the amendment

[1] Article 47 (4) 1 of the former Patent Act (amended by Act No. 9381 of Jan. 30, 2009) / [2] Article 47 (4) 1 of the former Patent Act (amended by Act No. 9381 of Jan. 30, 2009)

[1] Supreme Court Decision 2003Hu2010 Decided April 15, 2005 (Gong2005Sang, 762) Supreme Court Decision 2007Hu2674 Decided September 10, 2009 (Gong2009Ha, 1687), Supreme Court Decision 2008Hu1081 Decided April 29, 2010

Plaintiff

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2009Heo5530 Decided April 14, 2010

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

The grounds of appeal are examined.

Article 47(4)1 of the former Patent Act (amended by Act No. 9381, Jan. 30, 2009; hereinafter the same) provides that an amendment to the specification or drawings in the course of filing a petition for an appeal against a decision of refusal to grant a patent shall be a requirement to substantially expand or modify the scope of the claims. Here, whether such amendment constitutes a case where the scope of claims substantially expands or alters the scope of claims should be determined not only by the formal description of the scope of claims but also by the overall description of the specification including the detailed description of the invention before and after the amendment (see, e.g., Supreme Court Decisions 2002Hu413, Dec. 24, 2004; 2007Hu2674, Sept. 10, 2009); and it shall not be deemed that the amendment constitutes a reduced scope of claims; and it shall not be deemed that the purpose or effect has been modified; and it shall not be deemed that there is a substantial damage to a third party after the amendment to the scope of claims 200.

According to the facts and records acknowledged by the court below, the plaintiff filed a petition for an appeal against the decision of rejection regarding the invention of this case (No. 2007-13587) with the name "to walking in both sides or below", and submitted an amendment, such as the specification of July 1, 2008. The amendment of the decision of the court below as to Paragraph 6 of the scope of the patent application added a composition that can regulate the opening of the opening of the opening of the opening of the opening. Paragraph 6 of the scope of the patent application prior to the amendment, the detailed description and drawings of the invention of this case prior to the amendment include the detailed description and drawings of the invention of this case (No. 207-13587), and the new description and drawings of the invention of this case can not be seen as having any effect prior to the amendment of the specification and drawings, and therefore, the new description and drawings of the amended claims cannot be seen as having any effect prior to the amendment.

Nevertheless, the court below determined that the claim 6 of this case was substantially modified due to the amendment without comparing the whole of the claims before and after the amendment in relation to the whole of the specification. The court below erred by misapprehending the legal principles on Article 47 (4) 1 of the former Patent Act, which affected the conclusion of the judgment. The ground of appeal assigning this error is with merit.

Therefore, without further proceeding to decide on the remaining grounds of appeal, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices

Justices Min Il-young (Presiding Justice)