[1] Whether affirmative confirmation of the scope of a right of a registered invention by prior application is permitted for a subsequent invention registered as an invention subject to confirmation (negative in principle), and where affirmative confirmation of the scope of a right is allowed

[2] In a case where a subsequent invention is in a use relationship with the prior patent invention, whether the subsequent invention falls under the scope of the right to the prior patent invention (affirmative), and the meaning of “where the two inventions are in a use relationship”

[1] Articles 98 and 135 of the Patent Act / [2] Article 98 of the Patent Act

[1] Supreme Court Decision 99Hu2433 delivered on June 28, 2002 (Gong2002Ha, 1855) / [2] Supreme Court Decision 98Hu522 delivered on August 21, 2001 (Gong2001Ha, 2110)

Plaintiff (Patent Attorney Cho Jae-soo, Counsel for the plaintiff-appellant)

Korea Ocean Machinery Co., Ltd. (Patent Attorney Kim Han-sik, Counsel for defendant-appellant)

Patent Court Decision 2014Heo2269 Decided December 23, 2014

The lower judgment is reversed. The trial decision rendered by the Intellectual Property Tribunal on February 27, 2014 on the case No. 2013Da2775 is revoked. The total costs of the lawsuit shall be borne by the Plaintiff.

Judgment ex officio is made.

1. The active confirmation of the scope of a right to a patent that seeks confirmation of the invention registered by the later application as the invention subject to confirmation and falls under the scope of a right to the registered invention by the earlier application shall not be permitted in principle since it results in denying the validity of the right before the confirmation of an invalidation trial on the right to the later registration. Provided, That in an exceptional case where two inventions are allowed to seek confirmation of the scope of a right without denying the validity of the registration of the invention subject to confirmation in relation to the use under Article 98 of the Patent Act, the affirmative confirmation of the scope of a right between the rights holder of the right is allowed (see Supreme Court Decision 9Hu2433, Jun.

Meanwhile, in a case where a prior patent invention and a subsequent invention are in use, the subsequent invention shall belong to the scope of the right of the prior patent invention. Here, the term “where the two inventions are in use” refers to the case where the subsequent invention adds new technical elements to the technical composition of the prior patent invention, and the subsequent invention contains the substance of the prior invention, and uses it as it is, but maintains the unity of the prior invention as an invention within the subsequent invention (see Supreme Court Decision 98Hu522, Aug. 21, 2001).

2. We examine records in accordance with the above legal principles.

(1) The lower court determined that the challenged invention did not fall under the scope of the right under Paragraph 30 (30) of the instant patented invention (patent registration number 1 omitted) (hereinafter “instant Claim 30”).

① Claim 30 of the instant Claim has a number of holess formed at regular intervals, depending on the length direction opposite to each other on the two sides. The inner side of the instant Claim refers to an invention in respect of a string frame (conform 1) with a string support framework adjacent to a hole having a singing support framework (conform 1) and one another, having a string of the other. At the same time, a singing support framework is connected through a sing support framework, and simultaneously both sections are connected, and is fixed at the same time, they include a line with several independent lines assigned at regular intervals, so as to regulate the singing of the vessel by using the singing power (conform 2). The line diameter of the said vessel is 0.12.0mm (conform 3).

② Considering the purposes, effects, examples, applicants’ intent, etc. indicated in the detailed description of the instant patent invention, the instant Claim 30 invention ought to be construed to be limited to the technical scope that: (a) in order to ensure the effectiveness of the cross-section of the instant patent invention, the structure of the direction that forms a vessel only one direction between width and length, in one tin mold, in order to prevent the string of the string in the cross-sections, and to ensure that the string in one tin mold excludes the structure of a two direction in which the vessel cross-section or cross-section in the two direction.

③ The invention subject to confirmation is substantially the same as the registered invention (patent registration number 2 omitted). Moreover, the composition was added in the direction of crossing by cutting a vessel only in one direction of the invention under paragraph (30) of this case. It constitutes a relation of using the substance of paragraph (30) of this case including a summary of the invention under paragraph (30) of this case and using it as it is.

(4) Although the working of a patented invention is deemed to fall under the scope of a right to the patented invention, it is reasonable to deem that it is unnecessary to obtain permission from a patentee even if the working person falls under the scope of a patent right to the patented invention, in cases where the working person engages in a working process excluding a food within the scope of the right to the patented invention due to the addition of the working person.

(2) However, the instant Claim 30 invention was formed only in one direction for the purposes of preventing the fact that the former is divided into several parts and expanding the area of heat source exposure. The two direction-setting structure of the instant invention in which the material is cross-sectioned in the direction of street and vertical length cannot function in a horizontal and vertical framework, and thus, it cannot be deemed that the instant invention maintains the unity of the instant Claim 30 invention within the challenged invention. Therefore, the instant invention cannot be seen as having a relation of use. Therefore, the instant claim for confirmation of the scope of right is unlawful as an affirmative confirmation of the scope of right, seeking confirmation that the invention registered in the later application falls under the scope of the right of the registered invention by the prior application and falls under the scope of the right of the registered invention by the prior application. Thus, even if the Intellectual Property Tribunal had rejected the instant request for adjudication, the lower court erred by misapprehending the legal principles as to the scope of right, thereby dismissing the judgment, and thereby, did not err in the misapprehension of legal principles as to the scope of right.

3. Therefore, the judgment of the court below is reversed. Since this case is sufficient for this court to directly render a judgment, the Patent Tribunal’s ruling on the case No. 2013Da2775 on February 27, 2014 is revoked. It is so decided as per Disposition by the assent of all participating Justices on the bench, applying Article 99 of the Civil Procedure Act to the bearing of litigation costs.

Justices Lee Sang-hoon (Presiding Justice)