[1] The meaning of "the same invention" under Article 11 (1) of the former Patent Act

[2] In a case where both inventions compared to the application of Article 11(1) of the former Patent Act are “an invention of a product” and “an invention of a method”, whether the mere fact that the scope of invention differs from each other can be determined immediately that they are not identical inventions (negative)

[3] Whether the scope of right can be acknowledged in a case where a registered patent invention or a subsequent patent application invention was publicly known or worked domestically prior to the filing of the patent application, and is not new (negative)

[4] The case holding that paragraph (1) of the claim scope of the patented invention, "besylate salt of amlodipine" and Paragraph (1) of the claim scope of the earlier application invention, "the method of manufacturing besylate salt of amlodipine with the characteristic of recovering besylate salt of amlodipine after reactioning amlodipine sulphopic acid or its amlodipine salt with the characteristics of recovering besylate salt of amlodipine after reactioning amlodipine sulphine acid or its amlodipine salt with the characteristics of recovering besylate salt of amlodipine from the reaction of amlodip

[1] Article 11(1) of the former Patent Act (wholly amended by Act No. 42307, Jan. 13, 1990) provides that a patent may be granted to the same invention only for the best patent application, thereby adopting the principle of seafarership to prevent double registration of the same invention. The term “an identical invention” means not only the case where the technical composition is completely consistent, but also the case where there is a difference in the scope partially consistent, barring special circumstances. Although there are differences in the composition of both inventions, if it is merely a change to the extent ordinarily employed by a person with ordinary knowledge in the technical field, and if there is no special difference in the purpose and effect of the invention, both inventions are also the same invention.

[2] Under the premise of applying Article 11(1) of the former Patent Act (wholly amended by Act No. 42307 of Jan. 13, 1990), in determining whether two inventions are identical to each other, the substance of the two inventions compared should be identified and examined. It is not determined depending on whether there is any difference in the expression style. Thus, just because the two inventions are different in the scope of each invention as an invention of a product and a method, it cannot be determined immediately that they are not identical inventions.

[3] In a case where a registered patented invention was publicly known or publicly worked in the Republic of Korea prior to the filing of the patent application and no new one exists, the scope of the right cannot be recognized even without a trial for invalidation of the patent. The lack of newness and the violation of the crew principle are different from that of the patented invention, the subsequent application invention, and the prior invention or the prior application invention. Therefore, the above legal principle applies to the subsequent application invention, even if there exists a ground for invalidation of the violation of

[4] The case holding that paragraph (1) of the claim scope of the patented invention is identical in that "besylate salt of amlodipine" and paragraph (1) of the claim scope of the earlier application invention "the method of manufacturing besylate salt of amlodipine with the characteristic of recovering besylate salt of amlodipine after reactioning amlodipine sulphulphulphulphine acid or its amlodipum salt with the characteristics of recovering besylate salt of amlodipine after reactioning amlodipine sulphulphulphine salt among the sulable amlodip acids," and although there are somewhat different parts in both inventions, it cannot be said that there is a special difference in the effects of invention since it is merely a simple difference in the scope or a change to the extent that ordinary technicians can ordinarily employ it, both inventions are the same inventions.

[1] Article 11(1) (see current Article 36(1) and (2)) of the former Patent Act (wholly amended by Act No. 42307 of Jan. 13, 1990) / [2] Article 11(1) (see current Article 36(1) and (2)) of the former Patent Act (wholly amended by Act No. 42307 of Jan. 13, 1990) / [3] Article 11(1) (see current Article 36(1) and (2)) of the former Patent Act (wholly amended by Act No. 42307 of Jan. 13, 1990) / [4] Article 11(1) (see current Article 36(1) and (2)) of the former Patent Act (wholly amended by Act No. 42307 of Jan. 13, 190)

[1] Supreme Court Decision 84Hu30 decided Aug. 20, 1985 (Gong1985, 1247) Supreme Court Decision 90Hu1154 decided Jan. 15, 1991 (Gong1991, 754) / [2] Supreme Court Decision 89Hu148 decided Feb. 27, 1990 (Gong1990, 776) Supreme Court Decision 2005Hu3017 decided Jan. 12, 2007 (Gong2007Sang, 310) / [3] Supreme Court en banc Decision 81Hu56 decided Jul. 26, 1983 (Gong1983, 1334), Supreme Court Decision 2002Do5274 decided Jan. 10, 203

Plaintiff Co., Ltd. (Attorney Kim Jong-hwan et al., Counsel for the plaintiff-appellant)

Defendant (Attorneys Son Ji-yol et al., Counsel for the defendant-appellant)

Patent Court Decision 2007Heo2360 Decided June 13, 2007

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

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

1. Article 11(1) of the former Patent Act (amended by Act No. 42307 of Jan. 13, 1990; hereinafter the same) provides that a patent shall be granted to the same invention only for the best application, and adopts a seafarer's attention to prevent duplicate registration of the identical invention. "The same invention is identical" means not only the case where the technical composition fully coincides, but also the case where there are partial differences in the scope partially, barring special circumstances. Although there are differences in the composition of both inventions, if it is merely a change to the extent ordinarily recruited by a person with ordinary knowledge in the technical field, but it does not cause any special difference in the purpose and effect of the invention, both inventions are also the same invention (see Supreme Court Decisions 84Hu30 of Aug. 20, 1985; 90Hu1154 of Jan. 15, 1991).

In addition, as a premise for applying Article 11(1) of the former Patent Act, in determining whether two inventions are identical to each other, the substance of the two inventions compared should be compared and judged depending on whether they are different depending on the form of expression. Thus, just because two inventions compared to each other are different in the scope of invention as an invention of a product and a method, it cannot be determined immediately that they are not identical inventions (see Supreme Court Decisions 89Hu148, Feb. 27, 1990; 2005Hu3017, Jan. 12, 2007).

2. In a case where a registered patented invention was publicly known or publicly worked in the Republic of Korea prior to the filing of the patent application and there is no newness, the scope of the right cannot be recognized even without a trial for invalidation of the registration (see Supreme Court en banc Decision 81Hu56, Jul. 26, 1983; Supreme Court Decision 2002Do5514, Jan. 10, 2003; Supreme Court Decision 2002Do514, Jan. 10, 2003). Since the lack of newness and violation of the principle of crew is not different in that the identity of the patented invention or the subsequent patent application invention and the prior or prior patent application invention is a problem, the above legal principle applies to the subsequent

3. According to the records, paragraph (1) of the claim scope of the instant patent invention (patent number 91020, date of application August 5, 1987) (hereinafter “paragraph (1) invention of this case”) is “besylate salt of amlodipine” (patent number 90479, date of application April 4, 1987, date of publication, November 30, 1987), and the claim scope of the earlier application invention of this case (patent number 90479, date of application, November 30, 1987) (hereinafter “paragraph (1) invention of the earlier application of this case”) can be seen as the same description of the invention as “the method of manufacturing besylate salt of amlodipine with the characteristics of recovering besylate salt of amlodipine after reactioning amlodipine from among the sulphine sulphine mphines or its amlodin salt.”

In comparison with two inventions in light of the records, the two inventions are identical in that they contain besylate salt of amlodipine generated by the reaction of amlodipine and amlodipine acid. On the other hand, the invention of paragraph (1) of this case is an object invention and the patent application invention of paragraph (1) of this case is an invention of a method, and the patent application invention of paragraph (1) of this case is an invention of a method, compared to the invention of paragraph (1) of this case, an invention of paragraph (1) of this case is different in that measures are added after the reaction of "besylate salt" to recover besylate salt.

The difference between the Claim 1 invention and the Claim 1 invention in the earlier application of this case is examined. While the Claim 1 invention of this case and the Claim 1 invention in the earlier application of this case are different in the scope of invention as an invention of a product and a method, it is difficult to readily conclude that the two inventions are not identical inventions immediately on the ground that the scope of invention is different.

Moreover, the generation of salt can only be made out of the solvents, and if the solvent causes a chemical reaction with the raw materials, it can not be obtained, so it is an insulable solvent which does not cause a chemical reaction with any one of the raw materials, the solvent constitutes a self-consuled formula with a person with ordinary knowledge in the technical field to which the invention pertains (hereinafter “ordinary technician”). Therefore, in the instant earlier-application patent application paragraph (1) invention of this case, it cannot be said that there is a technical meaning in stating that only a person with ordinary knowledge in the technical field to which the invention pertains (hereinafter “ordinary engineer”).

Next, the chemical compounds generated through the reaction of the ionion and acid of salt is an ordinary skilled person. The invention of paragraph (1) of the earlier application of this case merely states that "after reaction of amlodipine with sulphulphphone acid, recovery of belodipine salt" is characterized by "belodipine recovery" and no other detailed technology or method is indicated in the invention of paragraph (1) of the earlier application of this case. Thus, there is no particular technical meaning in stating that "belodipine is recovered" in the invention of paragraph (1) of the earlier application of this case.

Therefore, if two inventions are compared to ascertaining the substance of the professional engineer and comparing it, they are identical in that they are contents of bedylate salt of amlodipine generated by the reaction of amlodipine and beeutic acid. Although there are some differences in these inventions, it is nothing more than a simple category difference or a change to the extent that ordinary technicians can ordinarily employ it, but it cannot be said that there is a special difference in the operating effect of the invention. Thus, it is correct to view the Claim 1 invention of this case and Claim 1 invention of earlier- claimed patent application of this case as the same invention.

In addition, Article 3 of the former Patent Act (amended by Act No. 3891 of Dec. 31, 1986), which was enforced at the time of the filing of the earlier application of this case, provides that "the invention of a material that can be manufactured by chemical methods" shall be an unpatentable invention under Article 3 of the former Patent Act (amended by Act No. 3891 of Dec. 31, 1986), and even if the defendant was unable to file an application for a patent with the invention of a material "besylate salt of amlodipine" at the time, such circumstance does not affect the determination of the identity of the invention of paragraph

Furthermore, the inventions of paragraphs (2) through (11) of this case are subordinate claims that directly or indirectly cited the inventions of paragraph (1) of this case, and merely simply added widely known and commonly used manufacturing techniques, which were stated and used in the pharmaceutical textbook, etc. prior to the filing of the patent application of the patented invention of this case, and thus are identical to the inventions of paragraph (1) of this case. Thus, the inventions of paragraphs (2) through (11) of this case and paragraph (1) inventions of the earlier application of this case constitute identical inventions on the grounds as seen in paragraph (1) of this case.

Thus, the patented invention of this case is identical to the patented invention of this case and is registered in violation of the seafarerism under Article 11(1) of the former Patent Act. Thus, the patented invention of this case should be invalidated under Article 69(1) of the former Patent Act. Thus, the scope of the right of the patented invention of this case is denied.

In the same purport, the court below is just in holding that the invention in question does not fall under the scope of the right to the patented invention of this case, and there is no violation of law such as misunderstanding of legal principles as to the identity

4. 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 Kim Young-ran (Presiding Justice)