[1] The method of handling where the specification, etc. attached to the patent application by the patent applicant is amended during the process of pre-examination

[2] Where the Intellectual Property Trial and Appeal Board erred by specifying the claim for a patent application as before the amendment of the specification while specifying the claim for a patent application, whether if the trial decision is subject to the scope of the patent application without any change before and after the amendment, there is an error of law that affected the decision of the trial

[3] The degree of "detailed description of the invention" in the patent application specification as to the invention of a chemical

[4] The case holding that only the quoted documents in which the chemical structure formula of chemical XV compounds, a new material, and manufacturing method of chemical XVI compounds similar thereto, are written in the specification of the patent application invention using the name "hythod 2-Supplementary T-B-B-B-B-B-B-C-V-V-V-V-V-V-related diseases treatment" cannot be deemed to include the "detailed description of the invention" to the extent that the party can easily implement (manufacturing) without excessive error in implementation

[1] In a case where the specification or drawings attached to the patent application are amended within 30 days from the date the patent applicant filed a request for trial against the decision of refusal pursuant to Article 173 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001), and the patent application is submitted to the pre-examination division pursuant to Articles 174(1) and 51(1) of the former Patent Act, the examiner of the Korean Intellectual Property Office shall reject the amendment by decision if the amendment is made in a case where the specification, etc. attached to the patent application is amended during the pre-examination process, and if the amendment is deemed lawful, it shall be deemed that the invention was filed as the same as the amendment was made.

[2] Even though the Patent Tribunal did not lawfully amend the specification during the process of examination prior to the filing of the patent application, but did not legally amend the claims of the patent application, if the trial decision was subject to the scope of the patent application without any change before and after the final amendment, the above trial decision did not contain any error of law affecting the conclusion of the judgment.

[3] The invention of a chemical is a chemical itself, so the existence of the chemical is confirmed by the specification at the time of the application. The chemical invention is difficult to grasp the substance of the invention without direct experiments, confirmations, and analysis, unlike the invention in other fields. There are many cases where chemical reaction, which seems naturally to lead to chemical theories and common sense in light of the empirical rule in the field of chemical field, is in progress with an unexpected reaction. Thus, in order for the existence of a chemical to be confirmed, unless it is clear to the extent that anyone can be acceptable if the chemical reaction, which was commenced in the specification for the syntheticity of the chemical, is merely stated in the specification, it is insufficient to say that the chemical structure is stated in the specification at the time of the application, and it is necessary to clearly state specific manufacturing methods to the extent that the party can easily reproduce and implement it by the party at the time of the application, and in particular, it is desirable for the applicant to state it as evidence materials at the time of the application.

[4] The case holding that only the quoted documents in which the chemical structure formula of chemical XV compounds, a new material, and manufacturing method of chemical XVI compounds similar thereto, are written in the specification of the patent application invention using the name "hythod 2-Supplementary T-B-B-B-B-B-B-C-V-V-V-V-V-V-related diseases treatment" cannot be deemed to include the "detailed description of the invention" to the extent that the party can easily implement (manufacturing) without an excessive error in implementation

[1] Articles 51(1), 173, and 174(1) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [2] Article 173 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [3] Article 42(3) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [4] Article 42(3) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

A. Hofman-Ra (Patent Attorney Lee Dong-sik et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

June 1, 2006

1. The plaintiff's claim is dismissed.

2. Litigation costs shall be borne by the plaintiff.

The decision made by the Intellectual Property Tribunal on May 31, 2005 on the case No. 2004 Won381 shall be revoked.

1. Basic facts

A. Application invention of this case

(1) The title of invention: Treatment of Type II T-A-Vary diseases in the arbitration of auxiliary cells using lethnody paths.

(2) Date of filing (date of international application)/Korean translation/filing filing date (international application number): November 5, 1998///Sgd. 10 May 10, 2000/Sgd. 200-700510 (PC/E1998/07067)

(P) Preferred Date/P: November 12, 1997

(3) The scope of claims (which was finally amended on January 27, 2005)

1. Pharmaceutical products for the treatment of diseases selected in the military composed of Atopy skin infection, Alphurine hepatitis, high fever, and Alphurian organ chronology, including the following chemical XV ethalody paths; its pharmaceutically acceptable salt; its compounds selected in the armed forces composed of hydro-decomposable Este ether, as its pharmaceutically acceptable compounds; and the foregoing, as well as pharmaceutical products for the treatment of diseases selected in the military composed of an Atopyitis, Alphurine chronye, alphurine, and Alphurine chronology:

Chemical XV

A person shall be appointed.

In the above formula, the combination is selected, and the combination is Meethyl and Meethyl when the combination of points exists, and the combination of points does not exist, and the combination forms a Methene and form a chropropy of chloricleic chloricles which is alcock, and alcock.

2. Claim 2. Deleted;

3. In respect of claims 1, the pharmaceutical products manufactured for bordering or petling.

4. In regard to claims under paragraph 1 or 3, pharmaceutical products manufactured at the refined agents, capsules, replates, spares, bricks, creams, fashions, fashions, powder-free agents, non-dembals, fishing, smelting, or dried demblings.

5. In regard to claims under paragraph 1 or 3, refined products containing active ingredients of 5 to 200§¯, and pharmaceutical products manufactured with capsules, deciphers, or papphers.

6. In regard to claims under paragraph 1 or 3, pharmaceutical products manufactured at a daily rate of 0.05 to 20 km per 1 kilogramme at body.

7. In regard to claims 1 or 3, pharmaceutical products manufactured at the strings, cream, fashions, powder, dysium, dysium and dysium, which contain active ingredients of 0.01 to 5 % of 0.01, or the strings of dry dys.

8. In regard to claims 1 or 3, pharmaceutical products created from the Gun composed of Lethodal alkyl chlorides and its alknife metal salts, alkic alkylmetallics, low-level ester Estezher, and 9-Plue ethyl ethers.

9. Claim 9.

10. In regard to claims under paragraph 1 or 3, preparations containing active ingredients of 20 to 100§¯, pharmaceutical products manufactured with capsules, deciphers or plates.

Claim 11. In paragraph 1 or 3, pharmaceutical products manufactured at a daily rate of 0.3 to 15§¯ per 1 kilogramme in body.

12. In regard to claims 1 or 3, pharmaceutical products manufactured at the strings, cream, fashions, powder, dysium, non-dysium fishery, dysium, or dried dysium, which contain active ingredients of 0.1 to 1.0% weight.

13. Claim 13. The chemical XV compound:

Chemical XV

A person shall be appointed.

In the above formula, the combination is selected, and the combination is Meethyl and Meethyl when the combination of points exists, and the combination of points does not exist, and the combination forms a Methene and form a chropropy of chloricleic chloricles which is alcock, and alcock.

B. Details of the instant trial decision

(1) As to the invention claimed in the instant case, the Plaintiff submitted the amendment to the specification, etc. (hereinafter “first amendment”) on September 26, 2002 and June 27, 2003 on September 26, 2003 in accordance with the notification of the submission of opinions by the Korean Intellectual Property Office, including the Plaintiff’s amendment of the specification, etc. at the time of the request for examination on May 12, 2000, and the notification of the submission of opinions by the Korean Intellectual Property Office (hereinafter “first amendment”). However, the Korean Intellectual Property Office rendered a decision of refusal on December 30, 203.

On January 30, 2004, the Plaintiff filed a petition for a trial seeking revocation with the Intellectual Property Tribunal. On February 24, 2004, the patent application invention of this case was submitted by the examiner of the Korean Intellectual Property Office before the examination, and on March 27, 2004, the patent application invention of this case was submitted by the examiner of the Korean Intellectual Property Office before the examination. The patent application invention of this case was submitted by the examiner of the Korean Intellectual Property Office on March 27, 2004 (the patent application invention of this case before it was amended by Act No. 6411, Feb. 3, 2001; hereinafter the same shall apply) the notification of submission of the grounds that “the patent application invention of this case cannot obtain a patent because it failed to meet the requirements under the provisions of Article 42(3) and (4)1 and 2 of the former Patent Act, and the Plaintiff submitted again the amendment of specification, etc. (hereinafter referred to as “third amendment”) on January 27, 2005.

After the completion of the pre-examination, the Korean Intellectual Property Tribunal tried the plaintiff's appeal No. 2004 won381, May 31, 2005, and rendered the next decision to dismiss the above appeal on the grounds of the ground that she was able to do so.

(2) Summary of the grounds for the instant trial decision

The chemical XV compound of the patent application invention of this case is a new material that had not been known before the filing of the patent application of this case. Among the specifications of the patent application of this case, the detailed description of the invention of this case does not contain any description of the chemical XV compound manufacturing method or its physical properties, etc., and only the document "J. Med. Chem 196, 39, 329] and [N.e., 196, 383, 450] and [N.e., 196, 383, 450] are written in the detailed description of the invention of this case, and thus, the patent application of this case cannot be executed because the detailed description of the invention of this case did not contain any new material XV compound manufacturing method. Thus, the patent application of this case violates Article 4(2) of the former Patent Act because it is not easily stated that a person (hereinafter referred to as a "party business operator") with ordinary knowledge in the technical field can easily be executed.

[Evidence] Evidence Nos. 1 through 8, Evidence No. 9-1, Evidence No. 10, 11, Evidence No. 1, and the purport of the whole pleadings

2. Summary of the grounds for revocation of the Plaintiff’s trial decision

A. The instant trial decision was rendered without examining whether the contents of the amendment are legitimate with respect to the fourth amendment, which is the final amendment of the instant patent application invention, and without examining whether the contents of the amendment are legitimate, with regard to the third amendment subject to a trial decision, the instant trial decision should be revoked in an unlawful manner.

B. The initial specification of the instant patent application invention clearly states the chemical structure formula of the chemical XV compound, and contains the chemical structure formula of the chemical XVI compound with similar chemical structure and its specific manufacturing method. The literature name, which is written in the literature, can easily manufacture the chemical type XV compound of the instant patent application invention without adding special knowledge from the manufacturing method of the chemical type XVI compound to the manufacturing method of the chemical type XVI compound with corresponding chemical structure. Thus, the instant patent application invention does not constitute the omission of entry in the specification, and therefore, the instant trial decision should be revoked unlawfully.

3. Determination

A. Whether the trial decision of this case is unlawful due to erroneous specification of the object of trial

(1) In full view of the purport of the entire pleadings, the following facts can be acknowledged in light of evidence Nos. 1 through 8, evidence No. 9-1, evidence No. 10, 11, and evidence No. 1 and evidence No. 1.

(A) With respect to the patent application invention of this case, the plaintiff amended the specification at the same time as the request for review on May 12, 200, and thereafter made the first and second amendments thereafter, but the examiner of the Korean Intellectual Property Office rendered a decision of refusal on December 30, 2003 on the ground that "the patent application invention of this case cannot be sufficiently supported by the detailed description of the invention in question" on the grounds that "the patent application of this case is published prior to the filing date 95/3745 (the publication date December 14, 1995) and Article 5,391,766 of the U.S. Patent Gazette (the publication date February 21, 1995), the patent application of this case cannot be sufficiently supported by the detailed description of the invention."

(B) On January 30, 2004, the Plaintiff filed a petition for a trial seeking revocation against the above decision of refusal. On February 24, 2004, the Plaintiff made a third amendment to correct the scope of claims as shown in the attached Table 1, which is within 30 days thereafter. Accordingly, the invention of this case was submitted to the pre-examination division.

(C) On March 27, 2004, the examiner of the Korean Intellectual Property Office who examined the invention of this case in the pre-examination process notified the Plaintiff of the submission of the opinion that "the invention of this case shall not be patentable under Article 42 (3), (4) 1, and 2 of the former Patent Act, because the chemical XV compounds are not clearly indicated in the specification of the invention of this case, and the pharmaceutical usage is not clearly indicated." On February 21, 2005, the examiner of the Korean Intellectual Property Office notified the Plaintiff of the submission of the opinion that "the invention of this case shall not be patentable under Article 42 (3), (4) 1, and (2) of the former Patent Act." On January 27, 2005, the Plaintiff made a fourth amendment to correct the invention in the same manner as the claim of the patent of this case recognized in the third, but the examiner of the Korean Intellectual Property Office reported the result of the examination that he maintained the original decision on February 21, 2005 without a dismissal.

(D) On May 31, 2005, the Korean Intellectual Property Trial and Appeal Board deliberated upon the Plaintiff’s request for a trial on May 31, 2005, after which the trial decision was rendered, the Korean Intellectual Property Trial and Appeal Board stated that the subject of the trial was “the claim of this case (the amended on February 24, 2004)” and stated that the subject of the trial was “the claim 1 of the amended claims as of February 24, 2004” (the third amended claims are included in the claim 1 from January 1 to 13 as shown in the attached Table 1, and the reasons for the trial decision of this case were stated as erroneous as to only the claims 11.) and subsequently, the trial decision of this case was rendered on January 2, 2005, which dismissed the Plaintiff’s request for a trial as of the summary of the trial decision.

(E) On the other hand, the fourth amendment provides that "the second-class T-Supplementary cell (T2)-related Immunity or the pharmaceutical products created to treat diseases arbitrationd by Th2-related inter-related diseases" in the claim 1 as "the pharmaceutical products created to treat the diseases selected in the military composed of an Atopy skin, Atopy infection, Atotopy-related diseases, alurine, aline or high-speed, and chronic organ infection or chronic organ infection, which are not accompanied or accompanied by a chronological organ," "the second-class T-Supplementary cell (T2) which is selected in the Gun, which is composed of an Atopy skin, Atouritis, Iropic chrony, Aropic chrony, Aropic chrony, Aropic chrony, and Aropic alian organ," and "the claim 1-2 and 7-3(s) of Claim 1 and 13."

(2) In light of Article 173 of the former Patent Act, which was in force at the time of the patent application for the invention in this case, where the amendment of the specification or drawing(s) attached to the patent application is submitted to the pre-examination division within 30 days from the date of the request for trial against the decision of refusal under Article 173 of the former Patent Act, the examiner shall reject the amendment by decision if the amendment made before the completion of the pre-examination of the specification or drawing(s) attached to the patent application is changed in the specification or drawing(s). Thus, the examiner of the Korean Intellectual Property Office shall examine the specification or drawing(s) attached to the patent application in the pre-examination process and if the amendment changed the substance of the specification or drawing(s) and if the amendment is deemed legitimate, he shall dismiss the amendment, and the plaintiff's fourth amendment prior to the patent application for the invention in this case shall be deemed legitimate in the examination process prior to the amendment and the fourth amendment shall be deemed legitimate in the examination process and the fourth amendment shall be deemed legitimate in the examination process.

However, according to the above facts, the Korean Intellectual Property Tribunal did not decide to dismiss the amendment for the fourth amendment, and stated the claim of the invention of this case as the third amendment on January 27, 2005, not the final amendment (the fourth amendment) on the ground of the decision of this case, but the third amendment on February 24, 2004. Thus, it is once erroneous that the decision of this case stated the third amendment as the subject of the decision of this case as the subject of the adjudication of this case.

However, as to the amendment of Claim 1, among the fourth amendment, there is no change in the composition of the pharmaceutical composition itself (the definition of the pharmaceutical composition has been partially corrected, but there is no change in the composition thereof only after the expression has been clearly corrected), and on March 27, 2004, the part concerning the pharmaceutical usage among Claim 1, which was pointed out that the pharmaceutical usage is not clearly stated in the notice of submission of opinions on March 27, 2004, may be corrected (the partial deletion may be deemed to have been made). As seen earlier, the trial decision of this case is one of the constituent elements of the pharmaceutical composition of Claim 1, which is a new compound, and it is judged that the invention of this case can not be patented on the ground that the detailed explanation of the invention in the specification is not stated that it is not easily implemented by the party. Thus, the above decision is subject to a claim amendment without any change in the trial decision before and after the fourth amendment, even if the final decision of the Intellectual Property Tribunal does not have any influence on the patent application of this case.

따라서 위와 같은 사정만으로 이 사건 심결이 위법하다고 할 수 없으므로, 원고의 2. ㈎ 주장은 이유 없다.

B. Whether the specification of the patent application invention of this case is legitimate

(1) Summary of the pending invention

The claim 1, 3 through 8, 10 to 12 among the claims in the patent application invention of this case is a pharmaceutical composition containing chemical XV compounds; claims 13 is a chemical XV compound. The patent application invention of this case is a chemical XV compound; a chemical XV compound is an invention related to the pharmaceutical composition containing such chemical XV compound; a chemical XV compound has a chemical combination in accordance with the definition of the air ventilation; it is ethyl and hydrogen and there is no chemical mixture in the case of hydrogen (hereinafter referred to as "chemical XV compound"); and there is no chemical mixture in the case of the formation of a chroprocoper (hereinafter referred to as "chemical XV compound"); and there is no chemical mixture in the case of the formation of a chemical XV compound in the form of Meene-ched inter-ched chrocoperide (hereinafter referred to as "chemical XV compound"); and there is no new chemical dispute between the patent invention of this case or before it is known (hereinafter the same applies).

(1) Chemical XV compounds.

A person shall be appointed.

(2) Chemical XV (i) compound.

A person shall be appointed.

(3) Chemical XV (ii) compound.

A person shall be appointed.

(2) The description of the specification in the invention of a chemical

Article 42(3) of the former Patent Act, which was in force at the time of filing a patent application for the invention of this case, provides that the detailed description of the invention in the specification attached to the patent application shall state the purpose, composition, and effect of the invention to the extent that the invention can easily be carried out by a person with ordinary knowledge in the art to which the invention pertains, and Article 62 of the same Act provides that a decision of refusal shall be made if the description in the specification does not meet the above requirements. The purport of the above provision is that the invention can not be deemed to be made public by itself. Thus, a person with ordinary knowledge in the art to which the invention pertains, i.e., a person with an average skill in the art to which the invention pertains, can be understood accurately without adding special knowledge, and at the same time, the purpose, composition, action, and effect shall be stated in the specification so that it can be reproduced (see Supreme Court Decisions 2003Hu1550, Dec. 23, 2004; 203Hu3264, Nov. 25, 2005).

Examining the legal principles as to the requirements for entry in the specification of a patent application as to the invention of a chemical like the invention of this case (the claim 1. is an invention of pharmaceutical products containing a chemical XV compound, which is a new chemical compound, and it can be deemed a new chemical invention.), since the chemical composition itself is a chemical itself, the existence of the chemical can be confirmed by the specification at the time of the application. Unlike the invention in other fields, it is difficult to understand the substance of the invention without direct testing, confirmation, analysis, and there are many cases where the chemical reaction, which seems naturally to lead to a chemical theory and common sense in light of the empirical rule in the field of the chemical field, actually takes place. Therefore, in order to confirm the existence of a chemical, unless it is clear that anyone is acceptable to the extent that the chemical structure is stated in the specification at the time of the application, it is essential for the manufacturer to write it in the specification at the time of the application, and in particular, it is essential for the manufacturer to write it in the specification at the time of the application.

(3) Whether the requirements for specification of the invention claimed in the instant application are met (whether the party can easily manufacture chemical XV compounds by entering the specification)

(A) Among the description of the invention in this case, the term “responding 3 x-1 xx-2 xx-1 xx-2 xx-2 xx-1 xx-2 xx-1 xx-2 xx-3 xx-2 xx-9 xx-2 xx-1 xx-2 xx-1 xx-3 xx-2 xx-9 xx-1 xx-2 xx-9 xx-2 xx-1 xx-1 x-3 x-2 xx-9 x-1 xx-2 xx-1 x-2 xx-9 x-2 xx-1 x-2 xx-3 x-2 xx-9 xx-1 xx-2 xx-9 xx-3 x-2 x-

(B) For this, the Plaintiff asserts that its chemical structure is similar to that of a chemical XV (i) compound; that its manufacturing process is merely 2,4-D-(Grade 3-ethyl); other manufacturing processes are based on literature (J. Med. Chem. 196, 39, 329) cited in the specification of the instant invention; such processes are based on the manufacturing process of the chemical XVI compound as widely known in the technical field; such processes are the basic chemical reaction of the 2,4-D-(3-methyl) chemical compounds that are widely known in the manufacturing process; thus, it is widely known that there is a structure of a double-use chemical compound that is identical to those of a VI chemical compound that is widely known in the technical field to the manufacturing process; thus, it is difficult for the Plaintiff to manufacture 13-V-I-I-I-V-I-I-U-V-I-I-U-V-I-I-U-I-V-I-I-U-I-V-I-V-I-I-I-I-I-I-U-U-U-I-I-I-I-I-V compounds compounds compounds compounds.).

In light of the chemical structure awareness of chemical XV compounds and chemical XVI compounds listed in the specification of the instant invention, chemical XV compounds are “” and chemical XVI compounds have common parts of “” as “,” and they include 3-Meethyl-2,4,6-ok xx clock and alcenium converted from the same location to Altracock, and according to the evidence evidence No. 12, the documents citing this in the detailed description of the invention in the instant application invention can only be cited in the document [J.D. Chem. 196, 39, 329] that the chemical structure of the instant chemical compound is not indicated in the process of manufacturing XI and in the process of manufacturing approximately 10, such as annexed X 2, and only the chemical compound of this case can be cited in the specification of the instant chemical compound that does not contain any excessive chemical reaction between the chemical process of the instant invention and the chemical process of the instant case, but the chemical compound of this case can not be described in the specification of the instant chemical compound.

More specifically, first chemical XV(i) compounds and chemical XV(i) compounds are chemical XV(i) compounds in its structure, and chemical XV(i) compounds are 1,3-diet social ethyls; chemical XVI compounds are tetradthal dyphalphthalphyphyphyphythy; and Eul evidence 2 provides that chemical XVI compounds are 1,3-dyphyphyphyphyphythy; hereinafter the same shall apply) chemical compounds are m (melt points; hereinafter the same shall apply) 10-11 xp (non-point; p. 35 x207 x. Thus, the chemical compounds can not be widely known from the tetradyphyphyphyphyyym compounds, so the chemical compounds can not be widely known due to such difference in the structure and tephyphyphyphyphyphythym compounds.

Second, even if it is possible to easily manufacture chemical XV(i) compounds, it is difficult for the chemical XV(i) compounds to be manufactured according to the manufacturing method of chemical XV(i) compound, and at any stage, to understand whether it is possible to manufacture chemical XV(ii) compound by melting chlosophine propy at any stage, and the Simmons-Smith reaction that makes double-combined alentent chlouds of chlouds with chlouds with a chlostromatic structure is reaction in the part where less than less obstacles exist. Therefore, it cannot be said that it is easy for the chemical XV(ii) compound to be able to be able to be able to be able to be able to be able to be able to be chlouded with a chloudic structure by selecting only one of the three known compounds existing in the chemical XV(ii) compound, and it cannot be said that there is a possibility that the chemical compound is able to be able to be chlouded with all chemical compounds.

Therefore, the invention of this case, which is an invention related to the chemical type XV compounds and the pharmaceutical products containing such chemical compounds, cannot be easily implemented (manufacture) by the party without excessive error of implementation from the description of the specification.

(c) Conclusion

Although the trial decision of this case was erroneous in not subject to the final revised statement, the trial decision of this case cannot be deemed unlawful solely on account of the lack of influence on the result of the trial decision. The patent application invention of this case constitutes lack of specification and thus cannot be patented under Article 42(3) of the Patent Act. Thus, the trial decision of this case, which is identical to this conclusion, is justified.

3. Conclusion

Therefore, the plaintiff's claim of this case is dismissed as it is without merit, and it is so decided as per Disposition.

Judges Choi Sung-sung (Presiding Judge)