The meaning of "the invention described in the first specification or drawings of an earlier application which is the basis of the priority claim" under Article 55 (1) of the Patent Act, among inventions for which a patent application containing a priority claim is filed pursuant to paragraph (3) of the same Article / The meaning of "the invention described in the first specification or drawings of an earlier application claiming the priority

A person who intends to obtain a patent may claim the priority of an invention described in the specification or drawings initially accompanying the initial patent application filed earlier than the filing date of the patent application having the right to obtain a patent or utility model registration (hereinafter “the initial specification, etc. of an earlier application claiming the priority”) (see Article 55(1) of the Patent Act), and when applying certain patent requirements, such as newness and inventive step, with respect to the invention described in the initial specification, etc. of an earlier application claiming the priority among the inventions claimed the priority, the patent application claiming the priority shall be deemed to have been filed at the time the earlier application was filed (hereinafter “the filing date of the priority claim”). However, deeming that the patent application was filed earlier than the filing date of the initial patent application by the domestic priority system as the filing date of the patent application claiming the priority, and thus, it may result in an unjust infringement of third parties’ interests, such as the patent applicant claiming the priority and the filing date of the earlier application claiming the priority, the scope of the earlier application claiming the priority shall be deemed to have been limited to the filing date under Article 47(1) of the Patent Act.

In addition, “matters indicated in the initial specification, etc. of an earlier application which is the basis of the priority claim” should be understood as having the same effect as indicated in the initial specification, etc. of an earlier application which is the basis of the priority claim, or as having ordinary knowledge in the technical field to which the invention pertains, even if not explicitly indicated, in light of the technological formula as of the date of the priority claim, if a person with ordinary knowledge in the technical field to which the invention pertains, is the person having the right

Articles 47(1) and (2), 55(1) and (3) of the Patent Act

Supreme Court Decision 2005Hu3130 Decided February 8, 2007 (Gong2007Sang, 513) Supreme Court Decision 201Hu767 Decided April 30, 2014 (Gong2014Sang, 1159)

Barun System (Patent & Law Firm C.S. Patent & Patent Attorney Ba-won et al., Counsel for the plaintiff-appellant)

Seoul High Court Decision 200Na1448 delivered on May 1, 200

Patent Court Decision 2012Heo1491 Decided August 17, 2012

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

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

A. A person who intends to obtain a patent may claim priority on the invention described in the specification or drawings initially accompanying the initial patent application or application for registration of a utility model, which he/she holds the right to obtain a patent or utility model (hereinafter “the initial specification, etc. of an earlier application claiming the priority”) (see Article 55(1) of the Patent Act). In applying certain patent requirements, such as newness and inventiveness, to the invention described in the first specification, etc. of an earlier application claiming the priority, among the inventions described in the patent application claiming the priority, the patent application claiming the priority shall be deemed to have been filed at the time the earlier application was filed (hereinafter “the filing date of the priority claim”). However, considering that the patent application is deemed the filing date prior to the filing date of the patent application claiming the priority, and thus, the examination of the patent application claiming the priority and the filing date of the earlier application claiming the priority may result in an unjust infringement of third parties’ interests, such as the patent applicant’s patent application claiming the priority right, based on Article 47(1) of the Patent Act or the filing date of the earlier application.

In addition, “matters indicated in the first specification, etc. of an earlier application which is the basis of the priority claim” should be understood as being the same as those indicated in the first specification, etc. of an earlier application which is the basis of the priority claim, if the invention is explicitly stated in the first specification, etc. of an earlier application which is the basis of the priority claim, or if a person with ordinary knowledge in the technical field to which the invention pertains even if not explicitly indicated, in light of the technical formula as at the date of the priority claim, the invention claimed in the patent application which is the basis of the priority claim is identical to that of the earlier application in the first specification, etc. (see Supreme Court Decisions 2005Hu3130, Feb. 8, 2007; 201Hu767, Apr. 30, 20

B. The lower court, on August 19, 2009, asserted priority based on the invention described in the specification and drawings initially attached to a patent application (hereinafter “Earlier invention”) with respect to “regular flow automatically control device” as of April 29, 2009, based on which the Plaintiff filed an application for patent on August 19, 2009, and determined to the following purport, based on the circumstances indicated in its reasoning, after comparing the claim(1) and (5) (hereinafter “claim(1) invention of this case and paragraph(5) invention of this case”) with the patent invention of this case (patent registration number omitted) under the name of “regular flow control device taking into account heating load” registered as a patent applicant.

(1) The invention of paragraph (1) of this case is different in that “the reduction of the flow of a variable flow valve in proportion to the required heat of the relevant room by taking into account the heating load of each room,” while the earlier application invention is “the reduction of the flow of a variable flow valve in accordance with the ratio of the optimal flow value of the closed room to the sum of the total flow values,” it is different in that “the reduction of the flow of a variable flow valve in the degree of the closed flow quantity of the relevant room.”

(2) In relation to this, the specification of the earlier application invention only states that “the quantity of water required for heating each room shall be proportional to the area of the room,” and does not state any different method to determine the quantity of water to be reduced due to the suspension of heating. As such, the “the quantity of the relevant room closed”, which is the quantity of water to be reduced due to the suspension of heating in the earlier application invention, shall be construed as the necessary quantity calculated in proportion to the area of each room. On the other hand, the specification of the instant patent invention merely states that “the proportion of the required heat to the area of the floor is in proportion to the area of the room is merely a theoretical theory that disregards the heating load, and in fact, the same area of the room may vary if considering the heating load in the actual heating design, and even if the floor area of each room is larger than the area of the small room, the area of the room may not be in proportion to the area of the floor requiring heating.”

(3) In addition, the control book of the instant Claim No. 1 contains “the optimal flow value in proportion to the required heat of the relevant room taking into account the heating load of each room.” Generally, the heat quantity that must be supplied to properly maintain the indoor temperature means the quantity that must be supplied through the structure of the wall, roof, ceiling, floor, glass hold, door, etc., and the amount of loss incurred by the crepit wind or ventilation open air ventilation, etc. In order to calculate the heating load, various human resources such as the heat control rate, structure size, indoor temperature, external temperature, etc. In order to calculate the heating load, the necessary flow quantity of the earlier application invention is calculated based on the area of the room. However, since the area of the room is merely one of several persons constituting the heating unit above, the required flow quantity of the earlier application invention cannot be deemed to include all persons necessary for calculating the heating unit of the instant Claim No. 1 invention.

(4) Although the 5 to 7 of the invention in an earlier application contains the quantities of flow corresponding to the optimal value, the specification and drawings of the invention in an earlier application do not contain any indication as to how to seek the optimal value, and thus it is not clearly known how to mean the optimal value, and in light of the fact that the specification and drawings of the invention in an earlier application do not contain any indication that the quantities of flow are adjusted according to the optimal value, it cannot be deemed that the “minimum value” of the earlier application invention is the same as the “minimum flow value” in consideration of the heating load by each room of the instant Claim 1 invention.

(5) Therefore, “the composition that reduces the flow of a variable water valve according to the ratio of the optimal flow value of the closed room to the total permissible flow value, considering the heating load of each room in the control book” of the instant Claim 1 does not include any matters explicitly stated in the specification, etc. of the earlier application invention, and it cannot be deemed that the ordinary technician is the same as those stated in the specification, etc. of the earlier application invention in light of the technological formula as of the date of priority claim. Ultimately, the instant Claim 1 invention does not constitute an invention identical to the invention described in the specification, etc. of the earlier application invention.

(6) The instant Claim 5 invention is a subordinate claim citing the instant Claim 1, which includes all the composition of the instant Claim 1 invention. As such, the instant Claim 5 invention does not constitute an invention identical to the invention described in the specification or drawing(s) of the earlier application invention, as in the instant Claim 1 invention.

(7) If so, the comparable invention 1 as indicated in the holding of the court below, which is known between the filing date of the priority claim of the patent invention of this case and the filing date of the patent invention of this case, may be deemed as prior art to deny the inventive step of the patent invention of this case.

C. Examining the records in accordance with the above legal principles, the above determination by the court below is just, and there is no error in the misapprehension of legal principles as to the determination of whether Article 55(3) of the Patent Act is applicable, or by failing to exhaust all necessary deliberations, etc.

2. Regarding ground of appeal No. 2

Based on its stated reasoning, the lower court determined to the effect that the nonobviousness of the instant Claims Nos. 1 and 5 is denied, on the grounds that the composition of the instant Claims Nos. 1 and 5 was all initiated on, or could be easily derived from, comparable inventions 1, and that the effect of, the instant Claims Nos. 1 and 5 was not significant compared to comparable inventions 1.

Examining the reasoning of the judgment below in light of the records, the above determination by the court below is just, and there is no error of law by misapprehending the legal principles on the determination of inventive step of invention or by failing to exhaust all necessary deliberations.

3. Conclusion

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.

Justices Lee Sang-hoon (Presiding Justice)