[1] Criteria for determining the inventive step of an invention under the Patent Act

[2] The case holding that the inventive step is recognized on the ground that the cited invention differs from the cited invention and its technical composition, and its effect is entirely different from the cited invention

[1] The purpose of Article 29(2) of the Patent Act is to ensure that an invention claimed in a patent application is easily derived from the prior art, if it is a creation that lacks inventive step, and thus, it is not possible to obtain a patent. The degree of difficulty in the creation to measure such inventive step is to be determined in consideration of the difference in technical composition and action effects of the art. Thus, if the composition of the patent application is different from the prior art, and is remarkably improved compared with the prior art in its action effect, the inventive step of the patent application invention should be recognized in light of the purpose of the patent system to promote the development of inventive step.

[2] The case holding that the invention in the application is entirely different from the cited invention, its purpose and technical composition are different from the cited invention and, in particular, the cited invention is "improvement of the speculation and absorption at the time of the non-competing of the medicinal substance" and it is recognized that the invention in the application is entirely different from the "the suppression of destruction by the self-deficiency reaction of an extract beta cell."

[1] Article 29(2) of the Patent Act / [2] Article 29(2) of the Patent Act

[1] Supreme Court Decision 96Hu559 delivered on October 11, 1996 (Gong1996Ha, 3334), Supreme Court Decision 96Hu1798 delivered on October 24, 1997 (Gong1997Ha, 3647), Supreme Court Decision 96Hu1972 delivered on November 28, 1997 (Gong1998Sang, 103), Supreme Court Decision 97Hu2156 delivered on March 12, 199 (Gong199Sang, 670)

오토이뮨 인코포레이티드 (소송대리인 변리사 박장원)

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Tribunal Decision 96Na1361 dated May 30, 1997

The original decision is reversed, and the case is remanded to the Korean Intellectual Property Office.

The grounds of appeal are examined.

1. According to the reasoning of the court below's decision, the invention of this case filed in October 10, 1991 (hereinafter referred to as the "original invention") is about "insulin, a medicine selected in the Gun composed of a sulin therapy suppressions of self-deficiency reaction with insulin, and his dynamic body," about "insulin, sulin, pulin, or inhales of insulin," which can prevent or suppress the outbreak of 1-type urine diseases by suppressing the destruction of sulmat cells cells related to 1-type urine cells, and the sulinization of insulin, which was applied to the invention of this case on June 30, 198 by means of an international patent (TPP) No. 88/056 of the official gazette No. 88/456 of the public notification No. 196 of this case (hereinafter referred to as the "insulinization invention"), and the sulinization of the original invention of this case is justified in terms of me."

2. The purpose of Article 29(2) of the Patent Act is to ensure that an invention claimed in a patent application is easily derived from the prior art, if it is a creation that lacks inventive step, and thus, the degree of difficulty in the creation that measure the existence of inventive step should be determined in consideration of the difference in technical composition and action effects of the prior art. Thus, if the composition of the prior art is different from that of the prior art, and its action effects are considerably improved compared with that of the prior art, the inventive step of the patent application invention should be recognized in light of the purpose of the patent system to promote the development of the inventive step (see, e.g., Supreme Court Decisions 96Hu559, Oct. 11, 1996; 96Hu1798, Oct. 24, 1997; 96Hu1972, Nov. 28, 1997).

3. According to the records, both inventions are different in terms of the purpose of providing her original invention with 'health substance suitable for administration by her mouth and manufacturing methods'. As the original invention aims at providing her urine urine urines for preventing or controlling the outbreak of diseases by those who are likely to be infected with her own urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine. The cited invention is not required to add specific urine urine in order to increase administration and absorption and manufacturing of veine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine urine.

4. As above, the original invention is different from the cited invention, its purpose and technical composition, and its operational effects are different, and it cannot be readily determined that the original invention can be easily derived from the cited invention because a person with ordinary knowledge in the technical field to which the invention pertains, can not easily derive from the cited invention. Thus, the nonobviousness of the original invention is acknowledged. Therefore, the original invention should have judged the inventive step of the original invention by examining what difference exists in its purpose, technical composition, and operating effects compared with the cited invention. However, the original invention should have determined the inventive step of the original invention without properly reviewing this point. However, the technical composition of the original invention is limited to those publicly notified by the cited invention, and it is determined that the original invention can easily be derived from the cited invention without any particular difference in its purpose and effect. The original decision of the court below did not err by misapprehending the legal principles on inventive step of the invention under the Patent Act, or by failing to exhaust all necessary deliberations, which affected the conclusion of the trial decision, and the appeal on this point is with merit.

Therefore, the decision of the court below is reversed, and the case is remanded to the Korean Intellectual Property Office for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices.

Justices Song Jin-hun (Presiding Justice)