Article 6 (2) of the former Patent Act (Law No. 2658 of Dec. 31, 1973) requirements for the presumption of application of Article 6 (2)

Article 6(2) of the former Patent Act (Act No. 2658, Dec. 31, 1973) provides that where an inventor, prior to his/her patent application, has filed an application for a patent that a person with ordinary knowledge in the field of technology to which the invention pertains, has been publicly known or worked in the Republic of Korea, or could easily make an invention by the invention described in a publication distributed inside or outside the Republic of Korea, he/she shall have deliberated on whether the quoted invention is publicly known or publicly worked prior to the filing of the original invention.

Article 6 (2) of the former Patent Act (Law No. 2658 of Dec. 31, 1973)

Attorney Park Sung-chul et al., Counsel for the plaintiff-appellant

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Office Decision 533 decided July 19, 1983

The original adjudication shall be reversed, and the case shall be remanded to the Korean Intellectual Property Trial Office.

As to ground of appeal No. 1:

According to the reasoning of the original decision, the court below maintained the measure of rejection ruling of the original invention pursuant to Article 6(2) of the former Patent Act (Act No. 2658), on the ground that the original invention filed on February 21, 1981 (which seems to be a clerical error in the text of February 20, 1981) is recognized to be easily made by a person with ordinary knowledge in the art to which the invention pertains, from the example of quotation 81-2002 of the public notice of utility model application.

However, Article 6(2) of the Patent Act provides that if an inventor, prior to his patent application, who has ordinary knowledge in the field of technology to which the invention pertains, files an application for facilitating the invention by means of an invention publicly known or worked in the Republic of Korea or by a publication published in the Republic of Korea or in a foreign country, he shall not obtain a patent. In order to apply the above provision, the court below should examine whether the quoted invention was publicly known or publicly worked prior to the filing of the patent application for the original invention. However, applying the above provision without examining it, the court below erred by misapprehending the legal principles of Article 6(2) of the Patent Act, which led to failure to exhaust all necessary deliberations. The argument is justified.

As to ground of appeal No. 2

For the reasons of the decision of the court below, the original invention is merely one of the materials cited as materials to explain that it can be easily seen from the example, and it cannot be said that the original invention contains any grounds for rejection different from the rejection ruling, on the ground that the original invention did not appear to have been subject to the original rejection ruling, on the ground that it is merely one of the materials cited as an example in recognizing the fact that it is widely known.

Therefore, it is not necessary to give the applicant an opportunity to submit a written opinion in accordance with the provisions of Articles 134 and 82 of the former Patent Act. The argument is groundless.

Therefore, for the reasons mentioned above, the original adjudication is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Jong-soo (Presiding Justice)

Kim Jong-sik shall not sign and affix a seal on his/her overseas business trip. A regular admission shall be made.