In a case where it is deemed that a patent applicant or a patentee has formally excluded a product subject to comparison with a patented invention from the scope of a patent application for the patented invention in the process of patent application, etc., whether the patentee’s assertion of infringement of a patent against a person who manufactures and sells the product subject to comparison is against the doctrine of criticism (affirmative); and the method of determining whether the product subject to comparison with the patented invention is an stimulated exclusion from the scope of a patent application for the patented invention in the process of application

If it is deemed that a patent applicant or a patentee has formally excluded a product from the scope of a patent application in the process of patent application or registration, etc., the assertion that the product compared with the patent invention belongs to the scope of protection of the patented invention and infringes on the patent right is in violation of the principle of no speech and advice. Furthermore, whether the product compared with the patent invention constitutes an ducably excluded product from the scope of a patent application in the process of patent application or registration, etc. shall be determined by taking into account not only the specification but also the opinions presented by the patent examiner of the Korean Intellectual Property Office until the patent application is patented, the intent of the patent applicant as

Articles 97 and 225(1) of the Patent Act

[Plaintiff-Appellant] Plaintiff 2001Hu171 delivered on September 6, 2002 (Gong2002Ha, 2452) Supreme Court Decision 2004Da51771 Delivered on June 30, 2006 (Gong2006Ha, 1420)

Defendant

Defendant

Attorneys Full-time and three others

Seoul Central District Court Decision 2004No3001 Delivered on May 25, 2005

The judgment below is reversed, and the case is remanded to the Seoul Central District Court Panel Division.

The grounds of appeal are examined.

In determining whether a product in comparison with a patented invention (hereinafter “subject product”) is identical to a patented invention, if a patent applicant or a patentee is deemed to have excluded the subject product from the scope of the patent application in the process of patent application, registration, etc., the assertion that the subject product belongs to the scope of the patent application and infringes on the right is not permissible since it violates the doctrine of prohibition. Furthermore, whether the subject product constitutes a non-cultural exclusion from the scope of the patent application in the process of application, registration, etc. of the patented invention shall be determined by taking into account not only the specification but also the opinion presented by the Korean Intellectual Property Office examiner until the patent is granted from the application, the intent of the patent applicant as stated in the amendment and written opinion submitted by the patent applicant, etc. (see Supreme Court Decisions 2001Hu171, Sept. 6, 2002; 2004Da51771, Jun. 30, 2006).

According to the facts and records duly admitted by the court below, the applicant of the patented invention of this case, who is notified of the reason for refusal, submitted an amendment to the effect that the patented invention of this case (Patent No. 24509) using the name "a continuous manufacturing device of a site", shall be allowed to capture the original part to the original part of the claim(s) attached to the application at the time of the initial application, and shall capture it to the original part(s) and then capture to the new part(s) to the new part(s) to the new part(s) and to the new part(s) to the new part(s) and to the new part(s) to the new part(s) to the original part(s) and to the new part(s) to the new part(s) to the original part(s) to the new part(s) to the new part(s) to the original part(s) to the new part(s) to the new part(s) to the original part(s) to the new part(s) to the new part(s) to the new part(s) to the new part(s) to the two) to the new part(s) to the two.

In light of the above legal principles and the above facts, the applicant of the patented invention of this case limited the scope of the patent application of this case to "a composition which passes through each dried room on the upper side and once, of the original site where the dried Start was promulgated" at the time of the first application in order to overcome the grounds for rejection as to the effects of the drying room and obtain a patent, and limited to "a composition which passes through each dried room on the upper side and once, of the original site where the dried Start was promulgated" and added to the detailed description of the invention "economic feasibility, etc. due to the complete construction and the reduction of the building space of the dried start," and accordingly, it is reasonable to view that the applicant of the patented invention of this case, like the Defendant's Allided site production machinery, excluded from the scope of the patent application of this case the device "a composition which passes through each dried room on the upper side and once," and thus, it is not permissible to assert that the Defendant's right to the patent application of this case is infringed by the principle of the scope of protection of the patented invention.

Nevertheless, the court below judged that the defendant infringed the exclusive license of the patented invention of this case on the ground that the production machinery of the site was equal to the patented invention of this case. The court below erred by misapprehending the legal principles on the scope of protection of the patented invention or by failing to exhaust all necessary deliberations, which affected the conclusion of the judgment. The ground of appeal pointing this out

Therefore, without further proceeding to decide on the remaining grounds of appeal, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Nung-hwan (Presiding Justice)