2019Hu10265. Nullification of registration (Patent)

Bigengengen, (Bigenc.)

Attorney Park Jong-young et al., Counsel for the defendant-appellant

1. cellule Co., Ltd.

Law Firm LLC et al., Counsel for the defendant-appellant

Patent Court Decision 2017Heo1854 Decided January 17, 2019

February 25, 2021

The appeal is dismissed.

The costs of appeal are assessed against the Plaintiff.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. Case summary and the judgment of the court below

A. On November 3, 2015, the Defendant filed a petition with the Intellectual Property Tribunal for a trial on invalidation of registration against the Plaintiff under Paragraph 1 (hereinafter referred to as the “instant Claim 1”) through (5) of the patent invention of this case (patent number omitted) under the name of “The Medical Treatment Act of Blood Meritorious Maternal Mas Related to Firal Ciral Ciral Ciral Ciral Ciralendary cells using the Cirra-M20 resistances.”

B. On July 29, 2016, the Plaintiff deleted the instant Claim Nos. 2, 5, and corrected the instant Claim Nos. 1, 3, and 4. On February 7, 2017, the Intellectual Property Trial and Appeal Board rendered a request for correction of the purport of correcting the instant Claim Nos. 1, 3, and 4. The Intellectual Property Trial and Appeal Board held that the instant request for correction was unlawful on the grounds that the patent application No. 1, 2, and 4 was deemed unlawful, and determined as the patent claim prior to the correction, the instant Claim Nos. 1, 2, and 4 did not meet the requirements indicated in the specification, and the instant Claim Nos. 3, 5 was rendered by the Defendant’s

D. On March 14, 2017, the Plaintiff filed a lawsuit seeking revocation of a trial decision with the Patent Court. The Patent Court, on January 17, 2019, deemed that the instant request for correction was unlawful, and maintained the instant trial decision on the following grounds based on the determination of patent requirements as to the claims prior to correction. The instant claim 1, 2, and 4 inventions are invalid. The instant patent invention does not fall under the invention described in the first specification of the earlier application (Evidence B No. 3) as indicated in the holding of the lower judgment, and thus, the date of determination of patent requirements is not the priority date, but the filing date of the earlier application (Evidence 9, Nov. 9, 199), and the prior invention 5, as indicated in the holding of the lower judgment, would have the eligibility of the earlier invention. Accordingly, the nonobviousness of the instant claim 3 and 5 inventions is denied by the prior invention 5.

2. As to the part concerning Claim 3 and Claim 5 of this case

A. Under Article 54 of the former Patent Act (amended by Act No. 6411, Feb. 3, 2001; hereinafter referred to as the “former Patent Act”) which was applied at the time of the application of the patented invention in this case, where a party files a patent application under the Paris Convention for the Protection of Public Interest Rights (hereinafter referred to as the “Convention”) and claims priority of the same invention after filing the patent application with the Republic of Korea, the filing date of the patent application with the said party (hereinafter referred to as the “priority claim date”) shall be deemed the filing date of the patent application with the said Party when applying the provisions on the requirements for patent, such as inventive step, etc. However, if the patent application is deemed to have been filed on the filing date of the priority claim prior to the filing date of the patent application with the Republic of Korea under the preferential right system in this Treaty and the requirements for the patent are examined, the priority claim shall be made.

Inasmuch as domestic priority provisions under Article 55(1) of the Patent Act are applicable to an invention that is retroactive to the filing date of the application of patent requirements pursuant to Article 54(1) of the Patent Act prior to the amendment in 2001, it is reasonable to deem that an invention is limited to the scope of the matters described in the specification or drawings (hereinafter referred to as “the specification, etc. of the earlier application, etc.”) initially attached to the patent application, which is the basis of the claim of priority in a treaty, among the inventions described in the patent application claiming priority in a treaty, among the inventions described in the patent application claiming priority in a treaty.

In this context, “matters indicated in the initial specification, etc. of an earlier application which is the basis of the priority claim” shall be understood as being the same as those indicated in the initial specification, etc. of an earlier application which is the basis of the priority claim, or as being identical to those indicated in the initial specification, etc. of an earlier application, in light of the technological formula as at the date of the priority claim if a person with ordinary knowledge in the technology to which the invention pertains, even though not explicitly indicated, is the person with the invention, in light of the technological formula as at the time of the priority claim (see, e.g., Supreme Court Decision 2012Hu

B. On the grounds indicated in its reasoning, the lower court determined that the nonobviousness of paragraphs (3) and (5) of this case is denied by prior inventions 5, on the grounds that both the Claim 3 of this case and Claim 5 of this case, which are subordinate claims, do not constitute the same invention as the invention described in the first specification, etc. of the earlier application claiming priority, on the grounds that the determination date of the patent requirement is not the date of priority claim, but the filing date of the earlier application ( November 9, 199), and therefore, the nonobviousness of the Claim 3 and Claim 5 of this case is not denied by prior inventions 5.

Examining the reasoning of the lower judgment in light of the aforementioned legal principles and records, the lower court did not err in its judgment by misapprehending the legal doctrine regarding priority claim and determination of inventive step, contrary to what is alleged in the grounds of appeal.

3. As to the portion of the Claim Nos. 1, 2, and 4 of this case, the Plaintiff did not submit the appellate brief concerning the Claim Nos. 1, 2, and 4 of this case within the submission period, and did not state the grounds for appeal in the petition of appeal.

4. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Young-gu

Justices Lee Dong-won

Justices Park Jong-young