[1] The case holding that a decision to dismiss an amendment is lawful on the ground that the amendment was made in violation of Article 47 (4) 1 of the former Patent Act, on the ground that the claim 2 invention is substantially expanded or modified compared to the claim 2 invention prior to the amendment, and that the amendment did not meet the requirements of Article 47 (4) 1 of the former Patent Act

[2] In a case where the Intellectual Property Tribunal did not grant the applicant an opportunity to state his/her opinion in a trial proceeding and determined that the decision to dismiss the amendment was lawful for reasons different from the grounds for rejection of the amendment made by the Korean Intellectual Property Office, whether the trial decision by the Korean Intellectual Property Trial and Appeal Board may be deemed to be an error of revocation of the trial decision in violation

[1] The case holding that the decision to dismiss the amendment is lawful, since the amendment was made in violation of Article 47 (4) 1 of the former Patent Act (amended by Act No. 9381 of Jan. 30, 2009) since the amendment did not meet the requirements of Article 47 (4) 1 of the former Patent Act, after the amendment of the patent application invention, which is "a failure to reinforce a vehicle spread", was practically expanded or modified compared to the claim 2 inventions prior to the amendment

[2] Where the Korean Intellectual Property Office rejects an amendment to the specification, etc. of an applicant under the Patent Act, unlike the case of a decision of rejection, it shall notify the applicant of the reason in advance and not be given an opportunity to submit a written opinion [see the main sentence of Article 63(1) of the former Patent Act (amended by Act No. 9381, Jan. 30, 2009); Articles 51(1) and 63(1) of the former Patent Act (amended by Act No. 9381, Jan. 30, 2009); and the proviso of Article 63(1) of the rejection of an amendment] In a trial proceeding, even if the Korean Intellectual Property Office determines that a decision of rejection of an amendment is lawful on the ground that the applicant did not state his/her opinion in the decision of rejection without providing the applicant an opportunity to submit his/her opinion in the proceedings involving objection, the Korean Intellectual Property Office has no sufficient opportunity to assert the amendment in relation to the ground in which the applicant did not request a new decision of rejection.

[1] Article 47 (4) 1 (current deleted) of the former Patent Act (amended by Act No. 9381 of Jan. 30, 2009) / [2] Article 159 (1) of the Patent Act

Plaintiff (Patent Attorney Kim Byung-jin, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

April 2, 2009

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on August 20, 208 on the case No. 2008 Won1492 shall be revoked.

1. Basic facts

[Ground for recognition] Unsatisfy, Gap evidence 1 to 7

A. The Plaintiff’s filing invention

(a) Name: Reinforcements for vehicles; and

(2) Date / Number of the application: December 14, 2006 / No. 10-206-127924

(3) Claims and major drawings: (a) the Plaintiff’s patent application invention is divided into “the invention prior to the amendment” and “the invention subsequent to the amendment” before and after the Plaintiff’s application for the amendment on February 26, 2008; and (b) the respective claims of the patent application invention prior to and after the amendment are reduced in the same manner as “the invention prior to the amendment” and “the invention prior to the amendment 0 inventions after the amendment,” respectively.

B. Details of the instant trial decision

(1) On February 22, 2008, the Korean Intellectual Property Office rendered a decision of refusal on the patent application invention prior to amendment on the ground that the patent application invention prior to amendment does not clearly state the claims and thus violates Article 42(4)2 of the Patent Act.

Accordingly, on February 26, 2008, the Plaintiff filed a petition for an appeal against the decision of refusal with the Intellectual Property Tribunal No. 2008 Won1492, and submitted an amendment, including a description of the amendment of the claims at the time of the decision of refusal (hereinafter “instant amendment”).

After the amendment on April 28, 2008, the Korean Intellectual Property Office rendered a decision to dismiss the amendment of this case and maintained the decision of rejection on the ground that it failed to meet the requirements of Article 47(4)2 of the Patent Act, which states that the claims 1 invention does not clearly state the claims after the amendment, and thus does not meet the requirements of Article 47(4)2 of the Patent Act.

(2) After the amendment on August 20, 2008, the Korean Intellectual Property Tribunal rendered a decision to dismiss the amendment since the amendment in this case did not meet the requirements of Article 47(4)1 of the Patent Act, as it practically expands or alters the claims 2 inventions compared to claims 2 inventions prior to the amendment. Furthermore, the decision to dismiss the amendment is lawful. Furthermore, the claims 2 inventions prior to the amendment did not clearly state the claims, and thus are in violation of Article 42(4)2 of the Patent Act, and thus are not patentable. If there are multiple claims, the decision to reject the patent application prior to the amendment should be rejected in whole, and the decision to reject the application prior to the amendment is also lawful, and the decision to dismiss the plaintiff's request for a trial.

2. Determination as to the legitimacy of the decision to dismiss the amendment of this case

A. The plaintiff's assertion

The plaintiff asserts that the decision to dismiss the amendment of this case is unlawful, since the claim 2 invention after the amendment does not substantially expand or change the claims compared to the claim 2 invention before the amendment, and the claims 1 invention after the amendment also clearly state the claims. (The plaintiff does not dispute the decision to reject the amendment of this case as illegal).

B. Determination

(1) Whether the claims 2 inventions have been substantially expanded or modified compared to the claims 2 inventions prior to the amendment

(A) After the amendment, the claim 2 made an amendment to the scope of claims 1 of the invention prior to the amendment, the portion of the "contestate (branch400) in a relatively larger shape that improves the body and support of the body is formed at the end of the unit of the clinical Factor (120) (20) and the slope connecting (130) (130) (210) (210) (210)" in the table of the claim 1 of the amendment, which reads that "a franchise (branch400) is formed at the end of the unit of the end of the 130th (230) (210) (210) (210) (210) (hereinafter referred to as "a franchise (branch400)")."

As such, in an invention of Claim 2 prior to the amendment, it is limited that the franchise branch formed in a specific location of the absence of reinforcement of the vehicle driver has a "large shape" more than the franchise branch formed in another location. However, in an invention of Claim 2 after the amendment, the amendment deleted the phrase "large-scale shape" in the invention of Claim 2 prior to the amendment, which is formed in a specific location than the franchise branch formed in another location, so there is no limit as to the relative size of the franchise branch formed in a different location from the franchise branch formed in a specific location. Thus, the subsequent claim 2 invention after the amendment is deemed to have practically expanded the claims compared to the claim 2 invention prior to the amendment.

(B) As to this, the Plaintiff asserts that the claim 2 invention after the amendment deleted an ambiguous composition included in the invention 2 invention prior to the amendment, and that the amendment is merely an ambiguous description and does not substantially expand or modify the claims. However, in the claims claim 2 prior to the amendment, it is clear that the franchise branch in the form of relatively large is unclear in the claims claims prior to the amendment, and that the franchise branch in the specific location of the vehicle should have a relatively larger shape compared to the franchise branch in the form of other locations, as long as the phrase “alternatively large”, which is a clear technical feature, is deleted in the claims 2 invention after the amendment, it is apparent that the claims are substantially expanded compared to the claims 2 invention prior to the amendment, so the Plaintiff’s aforementioned assertion cannot be accepted.

In addition, the Plaintiff asserts that the phrase “large-scale shape”, which is a restricted element of Claim 2 after the amendment, is merely a simple selective matter, and that it does not have any special effect, even if it is deleted, it does not substantially extend or modify the claims. However, insofar as the phrase “large-scale shape” is indicated in the claims, even if the said phrase does not have any special effect, it cannot be interpreted with the exception of claims. Furthermore, the specification of the invention in this case contains a large number of 15 square meters from the 20th end portion of the 110th unit (20), and the 110th unit (210), and the 15th unit (20th unit) of the 20th unit (20th unit) with the 15th unit (20th unit) with the 15th unit (400th unit) with the 15th unit (15th unit) with the 15th unit (200th unit) with the 10th unit (400th unit) with the 10th unit) size.

(2) Whether the decision to dismiss the amendment of this case is legitimate

As seen earlier, a claim 2 invention after the amendment is substantially expanded or modified in comparison with a claim 2 invention before the amendment. As such, the amendment of this case is an illegal amendment that did not meet the requirements of Article 47(4)1 of the Patent Act. Thus, it is no longer necessary to further examine whether the claims of the invention 1 after the amendment clearly state the claims, and the decision to dismiss the amendment of this case is legitimate (the plaintiff does not dispute the decision to reject the application for the invention before the amendment is illegal).

3. Whether there was an error in the procedure of the trial decision of this case

A. The plaintiff's assertion

The plaintiff asserted that the decision of this case was unlawful since the claims 2 inventions were substantially expanded or modified compared to the claims 2 inventions prior to the amendment, and thus, the decision to dismiss the amendment was lawful. Since the above reasons were not entirely specified in the decision to dismiss the amendment of the Korean Intellectual Property Office, the Korean Intellectual Property Trial and Appeal Board did not provide the plaintiff with an opportunity to present his opinion before the decision was made. Thus, the decision of this case should be revoked on the ground that the procedural violation of Article 159(1) of the Patent Act violates the provision of Article 159(1) of the Patent Act.

B. Determination

However, according to Article 159(1) of the Patent Act, the reasons that the parties did not apply in a trial procedure may be examined, and in this case, the parties shall be given an opportunity to state their opinions. As in this case, the Patent Tribunal did not appear in the decision to dismiss the amendment of the Korean Intellectual Property Office and did not appear in the decision to dismiss the amendment of the Korean Intellectual Property Office and did not appear in the decision to reject the amendment of the Korean Intellectual Property Office and did not appear in the decision to be lawful, once

However, if the Korean Intellectual Property Office rejects an amendment to the specification, etc. of an applicant under the Patent Act, unlike the case of a decision of rejection, it does not give prior notice of the reason for rejection in advance and does not provide an opportunity to submit a written opinion (see the main sentence of Article 63(1) and the proviso of Article 51(1) and the proviso of Article 63(1)). Second, even if the Korean Intellectual Property Office determines that a decision of rejection for amendment is lawful on the ground of other reasons not stated in the decision of rejection for correction without giving the applicant an opportunity to submit an opinion in a trial proceeding, as in this case, the applicant has sufficient opportunity to assert that the amendment is legitimate in relation to the relevant reasons in the litigation proceeding, which is the objection procedure, and third, even if the decision is revoked on the ground that the applicant did not have an opportunity to submit an opinion on the grounds that the applicant did not apply to the applicant, and even if the decision is revoked, it is difficult to accept the new trial proceeding, in view of the fact that the applicant cannot submit a written amendment again in order to correct reasons.

4. Conclusion

Therefore, the trial decision of this case that held that the decision to dismiss the amendment of this case was lawful is legitimate. Thus, the plaintiff's claim seeking the revocation is dismissed as it is without merit. It is so decided as per Disposition.

Judges Noh Tae (Presiding Judge)