The case holding that the decision of refusal is unlawful where the applicant's submission of an opinion by the Korean Intellectual Property Office to the effect that the patent applicant's submission of an opinion to the effect that the patent application's unclear concept in the patent application's specification falls under the lack of specification's specification's specification's specification's specification's specification's omission of specification's submission of an amendment to delete the patent application's claim and to establish a new claim

The case holding that the decision of refusal is unlawful where the applicant removed the claim and submitted an amendment to establish a new claim, but the Korean Intellectual Property Office rejected the new claim without giving an opportunity to present another opinion on the ground that the newly established claim has an ambiguous expression.

Articles 63 and 174(2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

Hague Corhion et al. (Patent Attorney Yellow-man et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

July 14, 2005

1. The decision made by the Intellectual Property Tribunal on November 25, 2004 on the case No. 2003 Won2196 shall be revoked;

2. The costs of lawsuit shall be borne by the defendant.

The same shall apply to the order.

1. Details of the instant trial decision

A. Application for the invention of this case and decision of refusal

Plaintiff 2, on June 8, 1996, submitted a translation to the Korean Intellectual Property Office (hereinafter “Plaintiff 2”) on the invention named “Der p third protea halog halog,” and “the nuclear acid to decrypt halog,” and on the other hand, the Korean Intellectual Property Office rejected the patent application under the Patent Cooperation Treaty on December 7, 1994 (hereinafter “international application number PC/US 94/14073”), but submitted a translation to the Korean Intellectual Property Office on June 8, 1996 (hereinafter “instant patent application number 96-703017.”). On March 11, 2003, the Korean Intellectual Property Office rejected the patent application under Article 42(4) of the Patent Act on the ground that some of the patent claims in this case are unclear.

B. The instant petition and trial decision

(1) On June 5, 2003, the plaintiff 2 and the non-party company filed a petition for an appeal against the above decision of refusal with the Korean Intellectual Property Tribunal and submitted a written amendment on July 1, 2003. The Korean Intellectual Property Office re-examines the invention of this case in accordance with the examination pre-examination order under Article 173 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001; hereinafter the same shall apply) and notified the plaintiff 2 of the opinion on July 29, 2003.

(2) Accordingly, on September 23, 2003, Plaintiff 2 and Nonparty Company submitted the amendment, such as the specification, etc. amended as described in Annex 1-A. However, on February 9, 2004, the Korean Intellectual Property Office notified Plaintiff 2 of the submission of the opinion to the effect that the application falls under the lack of specification because it failed to meet the specification requirements due to the unclear concept of “part 51” in Article 51 of the Patent Claim No. 51.

(3) On April 8, 2004, Plaintiff 2 and Nonparty Company deleted Claim 51 as indicated in Appendix 1-B, and newly enacted Claim 55. However, the Korean Intellectual Property Office maintained the original decision on September 21, 2004 on the ground that: (a) the stated matters in Claim 55, newly established, constitute unclear expressions; and (b) the grounds for rejection stated in the notice on the submission of the opinion dated February 9, 2004, were not resolved.

(4) The Korean Intellectual Property Tribunal rendered a decision dismissing the above request for a trial on the plaintiff's objection against the above decision of rejection on the ground that the "part of the claim 55 of the patent application of this case" constitutes an ambiguous expression, and if there is a ground for rejection even one of the claims claimed in the patent application, the patent application must be rejected. As such, the remaining claims should be maintained without having to be examined differently, and the original decision rejecting the patent application of this case was justifiable.

(5) Meanwhile, during the instant trial proceeding, Nonparty 1 was merged with Nonparty 1’s Hague during the period of Nonparty 1’s proceeding.

[Evidence] Evidence Nos. 1 through 5, Evidence Nos. 1 through 5, the purport of the whole pleadings

2. Determination on the legitimacy of the instant trial decision

A. The parties' assertion

(1) The plaintiffs' assertion

(A) All of the inventions of this case and paragraph (5) inventions of this case claim 51 and paragraph (5) inventions of this case specify "the part containing tepitope (Epitope; Epitope) on T-cell-cell or B-cell cell cell halogen (a port source causing Alphar disease)" among Der p III (the school name of a house dust dust), but the claims of this case claim 50 and paragraph (5) inventions of this case do not coincide with the short white halogom of the invention of this case 50 inventions of this case and paragraph (5) inventions of this case 51 and paragraph (5) inventions of this case should be independently independent of different inventions in substance, and the reasons for refusal should be notified to the applicant and the opportunity to present opinions, despite the fact that the decision of this case was not made in violation of Article 57 (1) and paragraph (5) of the former Patent Act, and thus, the decision of this case was unlawful.

(2) The defendant's assertion

(A) The Claim Nos. 51 and 55 inventions of this case are different from each other in paragraphs 50 and 52 respectively. However, the single white allevia described in the Claim Nos. 50 and 52 inventions of this case are the same in substance as the single leviation indicated in the column Nos. 1 or 2 in the column Nos. 50 and 52 attached to the specification of the invention of this case. Both inventions are claiming to specify the part containing t-cell or B-cell from among Derp III single allelogom allevis, which is substantially the same as the Claim No. 51 inventions of this case.

(B) The grounds for rejection of the Claim 5 invention of this case are the same as the grounds for rejection of the Claim 51 invention of this case. Thus, the opportunity to present opinions on Claim 5 invention of this case is substantially given to the applicant, and the decision of this case does not violate Articles 174(2) and 63 of the former Patent Act.

(C) Although the Claim No. 5 of this case, which claims part of protegal halogom, states specifically the Aminian fever of the specific part, the specification of the Claim No. 5 of this case constitutes the omission of entry on the following grounds: (a) Der p third short-cell or B-cell halogom, which is claimed in Claim No. 5 of this case in Claim No. 5 of this case, is not specifically and explicitly stated.

(b) Markets:

(1) Whether there was an error in the procedure of the trial decision of this case

The plaintiffs asserted that the decision of this case was erroneous in the procedural process on the ground that the applicant did not have the opportunity to present his opinion on the 5 invention of this case. The defendant argues that the 51 invention of this case and the 55 invention of this case are substantially identical to the 51 invention of this case, and that the 5 invention of this case are the same as the 5 invention of this case, and that the 5 invention of this case is substantially given the applicant the opportunity to present his opinion. Thus, we will examine whether the decision of this case related to the 5

(A) First of all, we examine whether the 51 invention and 55 invention of this case are substantially identical inventions, and as acknowledged earlier, the 51 invention of this case is part of Derp 3 short-term halogen, which is part of Derp-cell T-cell E-cell E-cell E-cell E-cell E-B-cell E-cell E-Penda, the characteristics of which include part of Derp 3 short-term halog, 50 U.S. 5 invention of this case are part of Der 50 U.S. 5 U. 5 U. 5 U.S. 5 U. 5 U.S. 5 U. 5 U.S. 5 U. 5 U.S. 5 U. 5 U.S. 5 U. 5 U.S. 5 U.C. 40 U. 5 U.S. 5 U.M. 5 U.M. 43 U.M. 5 U.C.

However, paragraph 50 invention of this case is a separate nuclear product which decrypt 2 of this case is separated from each other's Doerp 3 short halog, paragraph 48 invention "Derp 3 short halogen," which is characterized by the nuclear acid of paragraph 48, and its nuclear acid is included in No. 1A and No. 1B or its intercrypt 2 of this case's halog No. 50 of this case's halog No. 50 of this case's halog No. 50 of this case's halog No. 2 of this case's halog No. 50 of this case's halog No. 2 of this case's halog No. 50 of this case's halog No. 2 of this case's halog No. 50 of this case's halog No. 1 of this case's halog No. 50 of this case's halog No.

Furthermore, according to the above difference, short-term 5 U.S.C. 1 and the heating of 5 U.S.C. 1 and the heating of 5 U.S.C. 1 and the heating of 5 U.S. P.C. 1 and 5 U.S. P. P. P. P. P. P. P. P.C. 1 and P. P. P. P. P. P. P. P. P. P. P.P. 1 and P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P.P. 1 and P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P. P.P.P.

(B) We examine whether the applicant has the opportunity to present his opinion in respect of paragraph 55 of this case.

Article 63 of the former Patent Act provides that when an examiner intends to determine a ground for rejection that falls under any of the subparagraphs of Article 62 of the same Act in a patent application, he/she shall notify the applicant of the ground for rejection and give him/her an opportunity to submit a written opinion within a specified period, and Article 174(2) of the same Act provides that the above Article 63 shall apply mutatis mutandis to a case where the grounds for rejection and other grounds for rejection are found in a trial against a decision of rejection. The purport of the above provision is to determine whether an invention subject to a patent refers to the creation of new technical ideas utilizing the law of nature, and thus means a highly specialized knowledge, and it is necessary to determine whether an invention is eligible for a patent, and the examiner requires a high level of expertise and cannot have any such knowledge. Accordingly, it is too harsh to the applicant without giving him/her an opportunity to correct any error easily caused by the explanation and seafarerism. Therefore, in a decision of rejection, at least in accordance with the grounds for rejection, he/she shall submit a written notification of the grounds for rejection and notification to the applicant.

As seen earlier in this case, since the invention of Paragraph 51 and Paragraph 5 of this case are separate inventions, the examination shall be conducted independently, and the claim subject to rejection shall be specifically specified and the applicant shall be given an opportunity to notify the grounds for rejection and to present his opinion. As acknowledged earlier, the defendant's notice of opinion presented on July 29, 2003 and February 9, 2004 stated only the grounds for rejection as to Paragraph 51 of this case, and the grounds for rejection as to Paragraph 5 of this case are not stated. Accordingly, according to the above facts, the defendant notified the grounds for rejection as to the invention of Paragraph 51 of this case only, and did not provide an opportunity to notify the grounds for rejection and present his opinion as to Paragraph 5 of this case's invention of Paragraph 5 of this case, the defendant violated the procedure.

In regard to this, the defendant's ground for rejection of the claim No. 5 invention of this case is an unclear expression, and therefore it is identical to the ground for rejection of the claim No. 51 invention of this case. Thus, the defendant's ground for rejection of the claim No. 5 invention of this case is identical to the ground for rejection of the claim No. 51 invention of this case. Thus, although the contents of the ground for rejection are identical as to the claim No. 5 invention of this case, the claim No. 5 invention of this case is different from the claim of this case, which is the object of the ground for rejection, merely because the claim No. 51 of this case is provided with notification of the ground for rejection and opportunity to present opinions to the applicant, the claim No. 5 invention

In other words, the defendant asserts that the invention of this case No. 5 of this case, which claims part of the single fluoral halog, is not clearly indicated in the specification of the invention of this case, since the 'Der p third short fluoral alom part of T-cell or B-cell part of T-cella halog, which is claimed in paragraph 5 of this case, does not clearly state the specific part of the invention of this case, and therefore, it also constitutes an omission of entry, as alleged by the defendant, since the 5 invention of this case falls under the omission of entry because the 5 invention of this case is not clearly stated in the fluoral tion column of the specific part, even if it is a new ground for rejection not stated in the notification of the grounds for rejection, which is not a new ground for rejection, and is not given an opportunity to notify the grounds for rejection and to present opinions thereon, the above argument of the defendant is without merit in itself.

(2) Sub-committee

Therefore, even though the applicant should have given the applicant an opportunity to notify of the grounds for rejection and to present his opinion on the invention No. 5 of this case, the trial decision of this case, which maintained the decision of rejection without going through such procedures, shall be deemed to be unlawful in violation of Articles 174(2) and 63 of the former Patent Act.

3. Conclusion

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is reasonable, and it is so decided as per Disposition with the assent of all participating Justices.

Judges Park Dong-dong (Presiding Judge)