In cases where a party to the Paris Convention for the Protection of Industrial Property files a patent application for the same invention with a Party to the Paris Convention and claims priority in the Republic of Korea, whether the filing date of the patent application filed with such Party shall be deemed the filing date of the patent application in the Republic of Korea (affirmative), and the scope of the invention retroactively from the filing date of the priority claim / "matters stated in the first specification, etc. of the earlier application which is the basis of the priority claim

Article 54 of the former Patent Act (amended by Act No. 6411, Feb. 3, 2001; hereinafter “the Paris Convention for the Protection of Industrial Property”) which was applied at the time when a patent invention was filed in the Republic of Korea and claims priority after filing a patent application with a Party of the Paris Convention for the Protection of Industrial Property, the filing date of the patent application for the same invention (hereinafter “the filing date of the priority claim”) shall be deemed the filing date of the patent application with the Republic of Korea when applying the provisions on the requirements for patent such as inventive step, etc. However, if the patent is deemed to have been applied on the priority claim date earlier than the filing date of the patent application with the Republic of Korea by the priority claim date and the patent application accompanied by the priority claim, it is reasonable to view that the patent requirement is unfairly infringed on a third party’s interest, such as the patent applicant’s initial priority claim between the filing date of the priority claim and the filing date of the patent application accompanied by the priority claim, as provided for in Article 55(1) of the Patent Act.

In this context, “matters indicated in the initial specification, etc. of an earlier application which is the basis of the priority claim” shall be understood as the same as those indicated in the initial specification, etc. of an earlier application which is the basis of the priority claim, or as being identical to those indicated in the initial specification, etc. of an earlier application, if a person with 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

Article 54(1) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001); Article 55(1) and (3) of the Patent Act

Supreme Court Decision 2012Hu2999 Decided January 15, 2015 (Gong2015Sang, 266)

Bigengen Co., Ltd. (Attorneys Park Jong-min et al., Counsel for the defendant-appellant)

cella Co., Ltd. (Bae, Kim & Lee LLC et al., Counsel for the defendant-appellant)

Patent Court Decision 2017Heo1854 Decided January 17, 2019

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

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

1. Case summary and the judgment of the court below

A. On November 3, 2015, the Defendant filed a petition with the Intellectual Property Tribunal for a trial on invalidation of registration against the Plaintiff under Paragraph 1 (hereinafter “instant Claim 1”) through (5) of the patent invention of this case (hereinafter “instant Claim 1”) under the name of “The Medical Treatment Act of Blood Malutical Mal Mas Related to Firal Calinary Calinary Calinary cells Using Calina-M20 Aviations” (hereinafter “Patent No. 1”)

B. On July 29, 2016, the Plaintiff deleted the instant Claim Nos. 2 and 5, and corrected the instant Claim Nos. 1, 3, and 4.

C. On February 7, 2017, the Intellectual Property Trial and Appeal Board rendered a judgment on the patent requirements as to the instant request for correction on the ground that the instant request for correction is unlawful, and thus, the instant claim 1, 2, and 4 invention did not meet the requirements indicated in the specification. The instant claim 3, and 5 invention cited all the Defendant’s request for a trial on the ground that the nonobviousness is denied by prior invention 4 as indicated in the holding of the lower judgment.

D. On March 14, 2017, the Plaintiff filed a lawsuit seeking revocation of a trial decision with the Patent Court. The Patent Court, on January 17, 2019, deemed that the instant request for correction was unlawful, and maintained the instant trial decision for the following reasons.

The instant Claim Nos. 1, 2, and 4 are invalid. The instant patent invention does not fall under the invention described in the first specification of the earlier application (Evidence No. 3) as indicated in the judgment of the court below, and thus, the date of determining the patent requirement shall be the filing date ( November 9, 199) rather than the priority filing date, and the prior invention 5, as indicated in the judgment of the court below, which is distributed prior to that date, has the qualification for the prior invention. Accordingly, the nonobviousness of the instant Claim Nos. 3 and 5 is denied by the prior invention 5.

2. As to the part concerning Claim 3 and Claim 5 of this case

A. According to Article 54 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) which was applied at the time of the application for a patent of the instant invention, where a party files a patent application for the protection of industrial property under Article 54 of the Paris Convention for the Protection of Industrial Property (hereinafter “the 2001 Patent Act”), and then claims priority for the same invention after filing a patent application for the Republic of Korea, the date when the party files the patent application for the patent (hereinafter “the date of priority claim”) shall be deemed as the date of filing the patent application with the Republic of Korea when applying the provisions on the requirements for patent such as inventive step. However, if the patent application is deemed to have been filed with the Republic of Korea prior to the filing date of the patent application with the priority claim on the date of the patent application with the priority claim, it is reasonable to view that the first priority claim is limited to the first priority claim on the patent application with the priority claim and the filing date of the patent application with the priority claim on the patent application under Article 55(1).

Here, “matters indicated in the initial 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 initial 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 technological formula as of the date of the priority claim, if the invention claimed in the patent application containing the priority claim is indicated in the initial specification, etc. of an earlier application (see Supreme Court Decision 2012Hu2999, Jan. 15, 2015, etc.)

B. On the grounds indicated in its reasoning, the lower court determined that the nonobviousness of paragraphs (3) and (5) of this case was denied by prior inventions 5, on the grounds that both the instant Claim 3 inventions and the instant Claim 5 inventions do not constitute the same invention as the invention described in the first specification, etc. of the earlier application, which served as the basis for priority claim, on the grounds that the determination date of the patent requirement is not the priority claim date, but the filing date of the earlier application ( November 9, 199), and therefore, the instant Claim 3 and 5 inventions in the instant case were denied by prior inventions 5.

Examining the reasoning of the lower judgment in light of the aforementioned legal principles and records, the lower court did not err in its judgment by misapprehending the legal doctrine regarding priority claim and determination of inventive step, contrary to what is alleged in the grounds of appeal.

3. As to the part concerning Claim 1, Claim 2, and Claim 4 of this case

The Plaintiff did not submit the appellate brief on the part of the instant Claim Nos. 1, 2, and 4 within the submission period, and did not state the grounds of appeal in the petition of appeal.

4. 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 on the bench.

Justices Lee Dong-gu (Presiding Justice)