A. In a case where there is a ground for invalidation of a patent, whether the court can determine the patent as a reasonable invalidation under the premise of other litigation procedures than the invalidation trial procedure of the patent (negative)

B. Whether a court may deny the scope of rights in other lawsuits without an invalidation decision in a case where the registered patented invention has a new or all of its patented invention, but no inventive step exists (negative)

C. Criteria for newness and inventive step in a patented invention

A. The Patent Act provides that a patent may be invalidated through a separate procedure for the invalidation trial of a patent, so long as the patent has been registered once the trial decision that the patent should be invalidated by such a trial becomes final and conclusive, the court shall not determine that the patent is to be null and void as a premise in other litigation procedures even if there are grounds to invalidate the patent above.

B. If a part or whole of a registered patented invention is for the public use at the time the application is filed, the scope of the right may not be recognized regardless of whether the invalidation of the patent has been rendered. However, this is true if the part or whole of the registered patented invention is not new in light of the prior art at the time of the application, and thus, is not new. Although new, a person with ordinary knowledge in that field can easily make an invention by prior art, and thus, the court cannot, as a matter of course, deny the scope of the right in other lawsuits even if there is no inventive step.

C. The inventive step of a patent invention is premised on the existence of a newness. The issue of the newness of an invention in light of the prior art and the inventive step of an invention that can be easily considered from the prior art should be distinguished. Therefore, in order to determine the inventive step of the invention, the determination of the newness of the invention should first be prior to the determination of the inventive step of the invention. However, in a case where the inventive step of the invention is in an organic relationship, there are many cases where it is difficult to clearly distinguish the limitation or area in a specific case. Here, the term "the subject matter for public use" does not need to be limited to the case where the subject matter is the same as the prior art for public use, and even if the subject matter was made from the prior art for public use, if it is obvious that it was based on the prior art for public use, and thus, it can be denied prior to the inventive step

(a)Article 133(b) of the Patent Act;

A. Supreme Court en banc Decision 81Hu56 Decided July 26, 1983 (Gong1983, 1334) dated 24, 1987 (Gong1987, 1514) 90Hu2119 Decided September 24, 1991 (Gong191, 2615)

E.F.D. - Attorneys Im Dong-jin et al., Counsel for the defendant-appellant-appellee

Attorney Park Jong-ho, et al., Counsel for the defendant-appellant

Seoul High Court Order 90Ra109 Dated July 29, 1991

The order of the court below is reversed, and the case is remanded to Seoul High Court.

The grounds of reappeal are examined.

1. According to the reasoning of the order of the court below, the court below rejected the applicant's patent right registered as the manufacturing method (patent number 1 omitted), (patent number 2 omitted) (patent number 2 omitted), (patent number 2 omitted) (patent number 2 omitted) (patent number 3 omitted) (patent number 3 omitted) (patent number 3 omitted) (patent number 3 omitted) (patent number c) (patent number 3 omitted) is identical with the applicant's patent registration number on the ground that the applicant's patent manufacturing method and operation are easily identical with or similar to that of the applicant's manufacturing method and marketing prohibition (patent number 1 omitted).

2. However, the Patent Act provides that a patent may be invalidated through a separate procedure for the invalidation trial of a patent, so long as the patent has been registered once the trial decision that the patent should be invalidated by such a trial becomes final and conclusive, the court may not determine that the patent should be null and void only in other litigation proceedings, even if there are grounds to invalidate the patent above.

3. However, in a case where the whole or part of a registered patented invention is for the public use at the time of application, the scope of the right cannot be recognized regardless of the decision on invalidation of the patent (see Supreme Court Decision 63Hu45, Oct. 22, 1964; Supreme Court Decision 81Hu56, Jul. 26, 1983; Supreme Court Decision 81Hu56, Jul. 26, 1983; Supreme Court Decision 81Hu56, Jul. 26, 1983; Supreme Court Decision 2009Da856, Oct. 24, 200).

The purport of the precedent cited by the court below is that the scope of the right to a patent without any nonobviousness is not recognized, and the purport of denying the scope of the right to a patent without any nonobviousness is not to deny the scope of the right to a patent without any nonobviousness, even though the patent is new, although there is no inventive step.

4. The inventive step of a patented invention is premised on the existence of a newness, and the issue of the newness of an invention in light of the publicly known art and the inventive step of an invention should be distinguished. Therefore, in order to determine the inventive step of an invention, the determination of a newness of the invention should be prior to the determination of the invention.

However, newness and inventive step of an invention are in an organic relationship with each other, and there are many cases where it is difficult to clearly distinguish their limitations and areas in a specific case. Here, "the invention for public use" is not required to be limited to the case where it is the same as the prior art for public use, and even if the invention is made from the prior art for public use, if it is obvious that it is attributable to the prior art for public use and it cannot be viewed as a new technology, it can be denied prior to the inventive step.

5. Therefore, the judgment of the court below is erroneous in the misapprehension of the legal principles as to the invalidation of patent and the similarity and inventive step of the patented invention, which points out this out.

Therefore, without further proceeding to decide on the remainder of the grounds for reappeal, the order of the court below is reversed and the case is remanded to the court below. It is so decided as per Disposition by the assent of all participating Justices