[1] In a trial against a decision of refusal to grant a patent, the description of the notification

[2] Requirements for determining whether the invention constitutes a business method invention and the method of determining whether the patent application invention is using the law of nature

[1] According to Article 62 of the former Patent Act (amended by Act No. 7871 of Mar. 3, 2006) and Articles 63 and 170(2) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007), where the grounds for the decision of refusal and other grounds for rejection are discovered in a trial against the decision of refusal, a patent applicant shall be notified of the grounds for rejection and be given an opportunity to submit a new opinion on the grounds for rejection. Even if the notice of rejection is abstract or generally stated, it is sufficient that a person with ordinary knowledge in the technical field to which the invention pertains can understand the purport as a whole.

[2] Article 2 subparag. 1 of the former Patent Act (amended by Act No. 7871 of Mar. 3, 2006) defines the highly advanced invention as the creation of a technical idea utilizing the natural law. Thus, if an invention for which a patent application is filed does not use the natural law, it must be refused on the ground that it does not meet the requirement of “an invention having industrial applicability” under the main sentence of Article 29(1) of the same Act. In particular, in order to constitute a so-called business method (busi method) invention embodying a business method using information technology, it must be realized by using information processing hardware on the computer. Meanwhile, whether an invention for which a patent application is applied is based on the natural law should be determined as a whole as a claim. Thus, if it is determined that a part of the invention used the natural law as part of the invention described in the claim does not use the natural law but does not constitute an invention under the Patent Act.

[1] Article 63 of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007) / [2] Article 2 subparagraph 1 of the former Patent Act (amended by Act No. 7871 of Mar. 3, 2006) and Article 29 (1) of the former Patent Act

[1] Supreme Court Decision 96Hu1217 delivered on April 11, 1997 (Gong1997Sang, 1452) / [2] Supreme Court Decision 98Hu744 delivered on September 4, 1998 (Gong1998Ha, 2419) Supreme Court Decision 2001Hu3149 delivered on May 16, 2003 (Gong2003Sang, 1369)

Plaintiff (Patent Attorney Lee Jae-soo et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2006Heo1742 Decided December 14, 2006

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. As to the grounds of appeal Nos. 1 and 2

According to Article 62 of the former Patent Act (amended by Act No. 7871 of Mar. 3, 2006) and Articles 63 and 170(2) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007), where grounds for rejection are discovered in a trial against a decision of rejection, a patent applicant shall be given an opportunity to present a new opinion on the grounds for rejection by notifying the patent applicant of the grounds for rejection in a trial against the decision of rejection. However, if the grounds for rejection of the decision of rejection conforms to those of the decision of rejection, a new decision cannot be deemed to have been rendered for any reason different from those of the decision of rejection. Thus, it does not require the patent applicant to notify the grounds for rejection and give him an opportunity to submit a written opinion thereon (see, e.g., Supreme Court Decision 2006Hu329, Apr. 24, 2008).

According to the records, with respect to the invention of this case (application number: No. 10-202-47130) revised as of August 27, 2004, the examiner notified the examiner of the ground of rejection that "the patent applicant's decision to reject the patent cannot be seen as an online business method using a computer because the physical composition and composition of specific hardware carried out at each stage are not clearly stated, and it cannot be seen as a result of the examiner's decision to reject the patent application of this case (amended by Act No. 7871 of March 3, 2006; hereinafter the same shall apply) on December 8, 2004, as of December 2004, 204, the examiner cannot be seen as an "the patent applicant's decision to reject the patent application of this case cannot be seen as an "the patent applicant's decision to reject the patent application of this case cannot be seen as an "the patent applicant's decision to reject the patent application of this case for the reasons for rejection of the patent application of this case 20."

In light of the above legal principles, the notice of reasons for rejection as of December 8, 2004, as of December 2004, is written to the extent that the ordinary skill in the art to which the invention in question pertains can be understood as a whole. Further, even though the reasons for rejection, decision of refusal, and decision of trial stated in the notice of reasons for rejection cannot be deemed to coincide with the contents of detailed expressions, all of the claims of this case are consistent with the purport that the invention in this case cannot be deemed to be "an invention which can be used for industrial purposes" in the main text of Article 29 (1) of the former Patent Act. Thus, the reasons for the decision cannot be deemed to be a new ground for rejection that the plaintiff should give a separate opportunity to state his opinion. Therefore, the court below did not err in the misapprehension

2. As to the grounds of appeal Nos. 3, 4, and 5

Article 2 subparag. 1 of the former Patent Act defines the invention as an “invention,” which is highly advanced as a creation of technical ideas utilizing rules of nature. Thus, the patent application should be refused on the ground that the invention does not meet the requirements of “an invention available for industrial use” under the main sentence of Article 29(1) of the former Patent Act when it does not use rules of nature. In particular, in order to constitute a so-called business method (busi business method) invention realizing operating methods using information technology, information processing by software must be specifically realized using hardware (see Supreme Court Decision 2001Hu3149, May 16, 2003, etc.). Meanwhile, whether the invention used rules of nature should be determined as a whole as a claim. Thus, even if part of the invention used rules of nature as part of the invention described in the claim, if it is judged that the invention is not utilizing rules of nature as a whole, it does not constitute an invention under the Patent Act.

According to the above legal principles and the records, prior to the amendment of August 8, 2005, Paragraph (1) invention of this case falls under the category of a business method invention. The core part for realizing the technical task of the invention among its elements is the 4 and 5 stages at the time of original adjudication. The description of the claim of this part alone does not know how an ordinary technician specifically realizes the technical task of the invention using computer hardware, and this is the same when considering other descriptions, such as the detailed description of the invention or drawings. Thus, prior to the amendment, Paragraph (1) invention of this case cannot be deemed to be "an invention for industrial use" of Article 29 (1) of the former Patent Act.

Therefore, the court below is just in holding that the invention under Paragraph (1) of this case before the amendment cannot be seen as an invention under the main sentence of Article 29 (1) of the former Patent Act, and there is no error in the misapprehension of legal principles as to the establishment of a business method invention as otherwise alleged in the grounds of appeal Nos. 3 and 4. Furthermore, the court below rejected the patent for the invention of this case which did not meet the requirements of "an invention under industrial use" as above, and it cannot be viewed as violating Article 22 (2) of the Constitution of the Republic of Korea and Article 1 of the former Patent Act, which is the provision for the protection of the rights of the inventor,

3. 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.

Justices Kim Young-ran (Presiding Justice)