Whether the inventive step of a patented invention or a registered utility model may be deliberated and determined in a trial to confirm the scope of a patent right prescribed by the Patent Act or the Utility Model Act (negative)

[Majority Opinion] The Patent Act provides that a patent may be invalidated through a separate procedure for the invalidation trial of a patent established separately in a certain case. Thus, once a registration is made, a patent cannot be determined on the assumption that the patent is null and void in another procedure, unless a trial decision invalidating the patent has become final and conclusive, even if there are grounds for invalidation due to lack of non-obviousness.

Furthermore, the confirmation of the scope of a patent right under the Patent Act is a procedure for confirming whether the invention in question, which is the object of the trial, falls under the objective scope of the patent right in the claim. As such, the determination of the inventive step of the patent in the procedure goes beyond the purpose of the adjudication of the scope of a patent right under the Patent Act and does not fit the nature of the system. If the inventive step of the patent is at issue, separate from the adjudication of the scope of a patent right under the same procedure, the adjudication of the invalidation of the patent is prescribed in the adjudication of the scope of a patent right, and if the inventive step is denied in the adjudication of the scope of a patent right, it is not desirable in that it would compromise the function of the adjudication of the scope of a patent right by granting it to the adjudication of the scope of a patent right under the original function of the adjudication of the invalidation of a patent, even

However, the Supreme Court does not recognize the scope of rights solely on the ground that a part or whole of a patent is an open art at the time of filing an application, and thus, it cannot grant an exclusive or exclusive license to the trial to confirm the scope of rights, regardless of whether the invalidation of a patent has been rendered or not. However, such a legal doctrine is not an open art, but rather an open art, and it is possible for a person with ordinary knowledge in the technical field to easily make an invention by prior art, and thus, it cannot be extended to a case where the nonobviousness is denied. The foregoing legal doctrine

[Dissenting Opinion by Justice Shin Young-chul and Justice Min Il-young] Even though it is obvious that a patent will become null and void due to lack of non-obviousness, permitting a trial to confirm the scope of a patent right would not assist the parties to effectively resolve disputes over patent rights, but bring about waste of time and expenses in trial proceedings which do not have any interest to the parties, and it would be inconsistent with the purport of the system to establish a trial to confirm the scope of a patent right to promote the development of technology and contribute to industrial development

Since the procedure can only have meaning on the premise that the patent is valid, it is necessary to review whether there is grounds for invalidation such as the inventive step of the patent in trial proceedings, and to alter the trial structure to further examine and determine the scope of the right of the patented invention only in the case where the grounds for invalidation are denied.

In full view of these circumstances, if, even before a final and conclusive trial decision on invalidation of a patented invention becomes final and conclusive on the grounds that the patent has no inventive step, at least if it is evident that the patent will be invalidated due to lack of inventive step, there is no interest in requesting an affirmative or passive trial to confirm the scope of a patent right based on such patent right, and such a claim must be dismissed in an unlawful manner.

Articles 29(2) and 135 of the Patent Act; Articles 4(2) and 33 of the Utility Model Act

Supreme Court en banc Decision 81Hu56 delivered on July 26, 1983 (Gong1983, 1334), Supreme Court Decision 90Hu823 delivered on March 12, 1991 (Gong1991, 1184), Supreme Court Decision 90Hu1468 delivered on December 27, 1991, Supreme Court Decision 96Hu169 delivered on July 22, 199 (amended)

Korea Special Design Co., Ltd. (Patent Firm New century, Patent Attorney Kim Jong-ap et al., Counsel for the defendant-appellant)

Defendant (Patent Firm Auyang, Patent Attorney Park Jin-jin, Counsel for defendant-appellant)

Patent Court Decision 2012Heo6007 Decided December 6, 2012

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. The Patent Act provides that a patent may be invalidated through a separate procedure for the invalidation trial of a patent granted in a case where the patent falls under a certain reason. Thus, a patent cannot be determined on the premise that the patent is null and void in another procedure, unless a trial decision invalidating the patent has become final and conclusive, even if there are grounds for invalidation due to lack of non-obviousness upon registration.

Furthermore, the confirmation of the scope of a patent right under the Patent Act is a procedure for confirming whether the invention in question, which is the object of the trial, falls under the objective scope of the patent right in the claim. As such, the determination of the inventive step of the patent in the procedure goes beyond the purpose of the adjudication of the scope of a patent right under the Patent Act and does not fit the nature of the system. If the inventive step of the patent is at issue, separate from the adjudication of the scope of a patent right under the same procedure, the adjudication of the invalidation of the patent is prescribed in the adjudication of the scope of a patent right, and if the inventive step is denied in the adjudication of the scope of a patent right, it is not desirable in that it would compromise the function of the adjudication of the scope of a patent right by granting it to the adjudication of the scope of a patent right under the original function of the adjudication of the invalidation of a patent, even

However, the Supreme Court held that the scope of the right may be denied in the adjudication to confirm the scope of the right regardless of whether the invalidation of a patent has been decided (see, e.g., Supreme Court en banc Decision 81Hu56, Jul. 26, 1983). However, such legal doctrine is not a public announcement, but a person with ordinary knowledge in the art can easily make an invention by prior art, and thus, it cannot be extended to the case where the nonobviousness is denied.

The above legal principle applies likewise to utility models.

Supreme Court Decisions 90Hu823 Decided March 12, 1991; 90Hu1468 and 1475 Decided December 27, 1991; 96Hu1699 Decided July 22, 1997; 97Hu2583 Decided February 27, 1998; 97Hu2583 Decided February 27, 1998, which held to the effect that a patented invention or a registered utility model has newness but has no inventive step, the scope of the right can be denied as a matter of course in the adjudication to confirm the scope of a patent right, shall be modified to the extent inconsistent with this Opinion.

2. Based on its stated reasoning, the lower court rejected the Plaintiff’s assertion that the scope of the right cannot be denied in the scope of the right, even if there is no inventive step in the adjudication to confirm the scope of the right since each of the above devices becomes null and void due to the lack of inventive step, and thus, the scope of the right cannot be denied in the adjudication to confirm the scope of the right.

In light of the above legal principles, the judgment of the court below is just, and contrary to the allegations in the grounds of appeal, there are no errors in the misapprehension of legal principles as to whether an inventive step can be deliberated and judged in

3. 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 except for a dissenting opinion by Justice Shin Young-chul and Justice Min Il-young, and a concurrence with the Majority by Justice Ko Young-han and Justice Shin Young-chul.

4. Dissenting Opinion by Justice Shin Young-chul and Justice Min Il-young is as follows.

A. The Majority Opinion states that the inventive step of a patented invention or a registered utility model cannot be deliberated and determined in a trial to confirm the scope of rights. However, we cannot agree with the Majority for the following reasons.

B. The trial to confirm the scope of a patent right is a trial procedure to confirm the scope of a patent right on the premise that the patent is valid. Since the purpose of the trial is to determine the scope of the existing patent right, where a patent invalidation is invalidated through the procedure of the trial to invalidate the patent as prescribed by the Patent Act due to the grounds for invalidation of the patent, the benefit to request the trial to confirm the scope of the patent right is extinguished (see, e.g., Supreme Court Decisions 94Hu223, Sept. 10, 1996; 2006Hu3595, Mar. 29, 2007). Such legal principle is once registered, unless a trial decision that the patent be invalidated in the procedure to invalidate the patent becomes final and conclusive, it can be understood that the patent is based on the legal principle that the patent does not become void in the course of the trial to invalidate the patent, and as a result, it seems that there is a benefit to request the trial to

However, there is a case where a patent registration is made by mistake as to an invention which is ineligible for a patent because it fails to meet the requirements prescribed under the Patent Act. Such patent is the appearance of the patent, and there is no reason for invalidation, and there is no room for its substantive recognition, and thus, the scope of the right of the patent cannot be presented at the beginning. If a patent is permitted to confirm the scope of right without any particular restriction solely on the ground that the patent is not invalidated through the procedure for a trial on invalidation of the patent, it is unfair to confirm the scope of the right, which is a patent right having completed the patent without substance just because the patent registration is formally maintained. Even if the scope of right is recognized, it goes beyond the bounds of obtaining sound common sense and legal sentiment. Once the Supreme Court determines that the patent is denied, even if the registered patent is not new, it is impossible to recognize the scope of the right of the patent invention (see, e.g., Supreme Court en banc Decision 81Hu56, Jul. 26, 1983).

The Majority Opinion may deny the scope of a patent in the adjudication to confirm the scope of a patent, regardless of the existence of a trial decision on invalidation of a patent, but it cannot be said that the nonobviousness is denied. However, there is no fundamental difference in that both lack of originality and lack of inventive step are grounds for invalidation of a patent that is required to be determined by comprehensively examining and determining the composition, effects, etc. of the invention. Therefore, there is no reason to differentiate between the examination and determination of newness of an invention and the examination and determination of inventive step in the adjudication to confirm the scope of a patent right based on the premise of determining the scope of a patent. In the adjudication to confirm the scope of a patent right, the Majority Opinion, which states that

Meanwhile, even before a final and conclusive trial decision on invalidation of a patent is rendered, the Supreme Court declared the legal doctrine that a claim for injunction against infringement or compensation for damages based on the patent right shall not be granted as an abuse of right where the patent becomes void due to lack of non-obviousness (see Supreme Court en banc Decision 2010Da95390, Jan. 19, 2012). The purport of the en banc Decision is that where it is apparent that a patent will be invalidated by a trial on invalidation of a patent, the infringement of a patent cannot be recognized. If such logic is applied to a trial to confirm the scope of patent right, the benefit of requesting confirmation of the scope of right as a prior issue to determine whether the patent infringement is infringed should also be deemed to be denied. This is because, even though there is no room to acknowledge invalidation due to the lack of non-obviousness, a trial on the scope of right of the patent invention with the exception of a patent right is obviously permissible, and there is no need to accept the legal doctrine that prohibition or compensation for damages should only be respected in the scope of a patent right.

As can be seen, permitting a trial to confirm the scope of a patent right even though the patent will be invalidated due to lack of inventive step would not help resolve the dispute over the patent right effectively, but would waste time and expenses to a trial procedure which does not benefit the parties. It is inconsistent with the purport of establishing a system to facilitate technological development and contribute to industrial development by promoting protection and utilization of the patented invention. Since both the Intellectual Property Trial and Appeal Board are in charge of the patent invalidation trial or the trial to confirm the scope of a patent right, determining the inventive step of the patented invention in the trial to confirm the scope of a patent right does not appear to be an issue in terms of the subject of the determination. Rather, if a patent refuses to confirm the scope of a patent right on the grounds that it is obvious that the patent will be invalidated due to lack of inventive step, the trial to confirm the scope of a patent right is deemed to fall under the scope of the patent right of a patented invention, and the patent invention subject to confirmation is deemed to infringe the patent right by making a trial decision to deny the patent infringement of the invention subject to confirmation by lack of inventive step in the trial to confirm the scope.

In full view of these circumstances, if, even before a final and conclusive trial decision on invalidation of a patented invention becomes final and conclusive on the grounds that the patent has no inventive step, if it is evident that the patent will be invalidated due to lack of inventive step, it shall be deemed that there is no interest in requesting an affirmative or passive trial to confirm the scope of a patent right on the basis

In addition, the above legal principles are equally applied to utility models.

C. In light of the above legal principles, the court below should examine and determine whether the registered proposal of this case is obviously invalidated by a patent invalidation trial due to lack of non-obviousness, and determine whether to dismiss the claim for the confirmation of the scope of right of this case on the ground of its illegality. Nevertheless, the court below did not make the above determination on the ground that the scope of right cannot be denied even in the absence of non-obviousness. It erred in the misapprehension of legal principles as to whether the non-obviousness can be deliberated and determined in the confirmation of the scope of right, which affected the conclusion of the judgment. Therefore, it is reasonable to reverse and return the case

D. For the foregoing reasons, we respectfully dissent from the Majority Opinion.

5. Concurrence with the Majority by Justice Ko Young-han

A. Even if there is a ground for invalidation of a patent, the patent does not become null and void unless a trial decision invalidating the patent becomes final and conclusive (see Supreme Court en banc Decision 2010Da95390, Jan. 19, 2012). Therefore, the scope of the patent cannot be denied immediately by treating the patent as identical to a patent invalidated after a final and conclusive trial decision on invalidation becomes final and conclusive. The en banc Decision 2010Da95390, supra, is based on the premise that the patent can be determined as to whether there is a ground for invalidation in a patent infringement lawsuit, and is not the purport that the patent should be treated as null and void or that the scope of the right itself should be denied.

Meanwhile, the trial to confirm the scope of a patent right is a procedure with a limited purpose only to confirm whether the invention in question falls under the objective scope having an effect of a patent right, and is not a procedure to confirm or confirm the right relationship, such as the infringement prohibition claim or the existence of a claim for damages, but does not have binding effect on a patent infringement lawsuit or a patent invalidation trial (see Supreme Court Decision 9Da59320, Jan. 11, 2002, etc.). Therefore, allowing a judgment on the scope of a patent right to determine the invalidation of a patent in the procedure on the grounds that the scope of a patent right can only have meaning on the premise that the patent can be valid, does not correspond to the purpose and essence of the aforementioned system. Furthermore, the Patent Act has a system to confirm the scope of a patent right separate from the patent invalidation trial system, and if a trial is to be conducted in a lawsuit to confirm the scope of a patent right in question and a lawsuit to confirm the scope of a patent right, this is a procedure treating the invalidation trial procedure as a pre-trial trial procedure.

Furthermore, inasmuch as a patent invalidation trial and a trial to confirm the scope of a patent are combined with separate procedures different from their respective purposes and functions, the determination that the invention subject to confirmation falls under the scope of the right of the patented invention in the trial to confirm the scope of a patent right does not conflict with the determination that the patent is invalid in the subsequent trial to invalidate the patent.

B. Meanwhile, in a patent infringement lawsuit, the Supreme Court declared the legal doctrine that the patent invention may be tried and judged as to the inventive step of the patent invention on the premise of examining the propriety thereof (see Supreme Court en banc Decision 2010Da95390, supra). However, the rejection of patent infringement by accepting the defense of abuse of rights in a patent infringement lawsuit is to determine the legal relationship between the disputing parties on the ground of the non-existence of rights or the grounds for restrictions on exercise of rights, not the non-existence of rights, and the invalidation of the judgment is limited only between the disputing parties. On the other hand, the trial to confirm the scope of rights is limited to the scope of rights, and it does not finally confirm the legal relationship between the disputing parties and the third parties on the patent infringement. As such, even if the trial decision becomes final and conclusive and conclusive, it does not seem to be inconsistent with the basic structure and effect of patent invalidation in a trial to confirm the scope of rights, and thus, it cannot be asserted differently from the basic structure and effect of patent invalidation in a trial to confirm the scope of rights.

C. In addition, the existence of interest in a request for a trial is a matter of ex officio examination. If it is apparent that a patent will be invalidated by a patent invalidation trial due to lack of non-obviousness, as shown in the Dissenting Opinion, if there is no interest in the request for a trial to confirm the scope of a patent right, the Patent Tribunal or the Patent Court in all the procedures for the trial to confirm the scope of a patent right and any objection thereto should always examine whether the patent would be invalidated by a patent invalidation trial due to lack of non-obviousness ex officio, regardless of the allegations by the parties. This would be inappropriate to impose an excessive burden on the Intellectual Property Tribunal or the Patent Court. If it is possible to determine inventive step in the scope of a patent right as stated in the Dissenting Opinion, there may be cases where a dispute between the parties is actually terminated, but as long as the judgment in the trial to confirm the scope of a patent right does not have binding force on a patent invalidation trial or a trial to invalidate a patent, if the

D. In full view of the above facts, even if it is evident that a patent will be invalidated by a patent invalidation trial due to lack of non-obviousness, the claim for a trial to confirm the scope of a patent right cannot be deemed unlawful as there is no interest in the request for a trial, and such legal principle likewise applies to a utility model.

As above, I express my concurrence with the Majority Opinion.

6. Opinion concurring with the Dissenting Opinion by Justice Shin Young-chul

As pointed out in the Concurrence with the Majority Opinion, a patent does not become null and void unless a trial decision to invalidate the patent in a patent invalidation trial proceeding becomes final and conclusive. However, the same legal status or effect as a patent without exception is not granted to the patent. In the event that a patent becomes null and void by a patent invalidation trial due to lack of non-obviousness, the Supreme Court en banc Decision 2010Da95390 Decided January 19, 2012, which ruled that a claim for prohibition of infringement based on the patent right may be recognized as an abuse of right. The foregoing en banc Decision has a different effect by rejecting the claim for prohibition of infringement based on the patent right by applying the doctrine of abuse of right. Likewise, the purport of the Dissenting Opinion is to supplement the litigation economy and the confirmation of the scope of patent rights sought by the en banc Decision by rejecting confirmation as to the scope of effect of the patent right where it is apparent that the patent becomes null and void by a patent invalidation trial even in the scope of a patent invalidation trial.

The adjudication to confirm the scope of a patent right is based on a logical premise that there exists a patent subject to the confirmation of the scope of a patent right. The logical premise cannot be denied on the ground that the Patent Act has a patent invalidation adjudication system separate from the adjudication to confirm the scope of a patent right. In disregarding this, allowing a patent without any substance to confirm the scope of a patent right in the form and form cannot be deemed as the purport of the Patent Act combined with the two systems.

Even though the invalidation of a patent is apparent, if a trial decision is rendered on whether the invention in question falls under the scope of the patent right, it is not desirable to form a new legal relationship based on the false perception that not only the parties to the trial but also a third party’s patent should be invalidated, or that a third party’s patent may be protected under the Patent Act. In addition, the scope of a patent right scope is not effective against a third party other than the parties to the trial, and it is reasonable to determine the scope of a patent right after examining whether there is a ground for invalidation of the patent right after examining whether there is a clear ground for invalidation of the patent right. Unless otherwise, the parties to the trial and the third party’s claim for the confirmation of the scope of a patent right is interrupted to the extent that the effect of the prohibition against a third party’s prohibition against a patent, thereby impairing general

The concurring opinion with the Majority concerns that if a patent should be invalidated due to lack of non-obviousness in the scope of a patent right scope, it would be likely that the Intellectual Property Trial and Appeal Board or the court will impose an excessive burden on the parties and waste the time and expenses. However, as the existence of benefits for a trial is ex officio, the Korean Intellectual Property Trial and Appeal Board or the court should always examine and determine whether there is grounds for invalidation of a patent regardless of the parties’ assertion. Inasmuch as the burden of examining the interests of a trial is attributable to the determination of the scope of a patent right, a request for a trial without any benefit may not be allowed without omission of the trial. As such, it would be difficult to avoid criticism that a trial on the invalidation of a patent is inappropriate in the scope of a patent right scope. Rather, by distinguishing the patent invalidation trial and the scope of a patent right scope trial, a single dispute may be made in several litigation cases, which in itself causes waste of time and expenses and causes inconvenience to the parties and increases the burden of the Korean Intellectual Property Trial and Appeal Board or the court.

In addition, such a legal principle is equally applied to utility models.

As above, I express my concurrence with the Dissenting Opinion.

Justices Yang Chang-tae (Presiding Justice)