[1] Criteria to determine whether the patent invention is equivalent to the (Ga) invention

[2] The method of determining whether a specific composition has been formally excluded from the scope of claims during the process of patent application for a patented invention

[3] The case holding that it is difficult to readily conclude that the applicant had the intent to exclude those in an equivalent relationship with the DDA column added in making an amendment by adding the descriptions of DDA column to the claims of the patent invention under paragraph (1) of the patent invention from his/her right scope

[1] In order for the invention to be deemed within the scope of a patent right of the patented invention, an organic combined relationship between each element and the element of the patented invention must be included in the (a) invention. However, even if the (a) invention's substitution or modification of the elements of the patented invention is made, the solution principle of the task is identical in both inventions, even if it is based on such substitution, if it is obvious that a person (the party) with ordinary knowledge in the art to which the invention pertains can easily think that the (a) invention's substitution is made within the scope of a patent right, unless there are special circumstances such as the (a) invention's substitution or modification of the elements of the (a) invention's substitution or modification, and if it is obvious that the (a) invention's substitution is equivalent to the elements corresponding to the patented invention's claim, it is still within the scope of a patent right.

[2] Whether a certain composition in the process of filing an application for a patented invention is an stimulated exclusion from the scope of claims should be determined by taking into account not only the specification but also the opinions presented by the examiner of the Korean Intellectual Property Office until the patent is granted from the application, the intent of the applicant as stated in the amendment, written opinion, etc. submitted by the applicant during the examination process. In an invention whose scope of patent claims consists of several claims, barring any special circumstance, it should be determined by taking into account the progress of each claim, and

[3] The case holding that it is difficult to readily conclude that the applicant had the intent to exclude any content equivalent to the DNA heat added in making an amendment in addition to the description of the DNA column under paragraph (1) of the patent claim of the patented invention from his/her right scope

[1] Article 57 of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990), Article 135 (1) of the Patent Act / [2] Article 57 of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990), Article 135 (1) of the Patent Act / [3] Article 57 of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990), Article 135 (1) of the Patent Act

[1] Supreme Court Decision 97Hu2200 delivered on July 28, 200 (Gong2000Ha, 1954) Supreme Court Decision 98Hu836 delivered on June 15, 2001 (Gong2001Ha, 1651) Supreme Court Decision 98Hu522 delivered on August 21, 2001 (Gong2001Ha, 210), Supreme Court Decision 2001Hu393 Delivered on September 7, 2001 (Gong2001Ha, 2197) (Gong200Hu3517 delivered on August 23, 2002)

Japan Co., Ltd. (Patent Attorney Choi Jong-soo et al., Counsel for the defendant-appellant)

Plastic tyte tyrete, Corposte (Patent Attorney Kim Dong-soo et al., Counsel for the plaintiff-appellant)

Patent Court Decision 98Heo8243 delivered on December 15, 2000

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

1. According to the reasoning of the lower judgment, the lower court determined that: (a) the instant patent invention (No. 101875) to which the title of the instant Claim 3 is “No. 50/100 of the patent claim No. 1; (b) the Defendant’s objection in the patent application process of the instant patent invention falls under the category of equivalents of the instant patent invention, but is not identical to, or has no relation to, the instant patent invention; (c) the Defendant’s attempt to delete part of the instant Claim No. 1 in which the instant Claim No. 3 is indicated as “No. 5/100 of the patent claim No. 1; and (d) the Defendant’s attempt to delete part of the instant Claim No. 1 in which the instant Claim No. 3 is indicated as “No. 5/100 of the patent claim No. 1; and (d) the Plaintiff’s attempt to delete part of the instant Claim No. 1 in which the instant Claim No.

2. However, in order for the invention to be deemed within the scope of the right of the patented invention, an organic combined relationship between each element of the patented invention and the elements of the patented invention must be included in the (a) invention. However, even if the (a) invention's substitution or modification of the elements of the patented invention is made, the solution principle of the task is identical in both inventions, even if it is based on such substitution, if it is obvious that a person (the party) with ordinary knowledge in the technical field to which the invention pertains can easily think that the (a) invention could easily make an invention from the technology already known to the public or known art at the time of the application for the patent invention, or that the exchanged elements of the (a) invention's substitution through the procedure for the application for the patent invention correspond to the exclusion from the scope of the patent claim, and thus, (a) invention's substitution is still within the scope of the right of the patented invention, considering that the elements corresponding to the patented invention are equivalent to the elements of the patented invention, and thus, (b) invention still falls within the scope of the right of the patented invention.

Furthermore, the determination of which composition in the process of filing an application for a patent invention should be made by taking into account not only the specification but also the opinions presented by the examiner of the Korean Intellectual Property Office until the patent is patented from the application and the applicant’s intent as expressed in the amendment and written opinion submitted by the applicant during the examination process. In an invention whose scope of a patent claim consists of several claims, barring any special circumstance, it should be determined by taking into account the progress of each claim and determining which composition is a food excluded from the scope of the right

In light of the records and the above legal principles, the amendment under Paragraph (1) of the patent claim of this case was made in response to the defendant's objection that the above claim was not new and non-obviousness compared to the cited invention, and Paragraph (1) after a correction was made by combining the description of salt in the response of patent objection submitted by the plaintiff with the correction, is new and non-obviousness, and Paragraph (1) after a correction was made by combining the contents under Paragraph (1) of the patent claim prior to deletion with Paragraph (2) of this case, and it was stated to the effect that the method of manufacturing PE is more specific by combining the contents under Paragraph (1) of the patent claim prior to deletion, and it was not recognized that the plaintiff did not have any content directly related to the DNA order added by the amendment, and thus it is difficult to conclude that the plaintiff was intended to exclude the contents of the patent claim of this case from the scope of his right in addition to the description of the DNA order under Paragraph (1) of this case, or that the court below did not have any error in the misapprehension of legal principles as to the claim of this case's claim.

3. Therefore, without examining 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 Song Jin-hun (Presiding Justice)