[1] Whether it is permissible to ex post facto determine whether the nonobviousness of an invention is denied on the premise that an ordinary technician knows the technology disclosed in the specification of the invention (negative)

[2] The case holding that it is not permitted to determine the inventive step of the invention ex post facto on the premise that the invention can be easily described from the composition, etc. of "uncompeting," in determining the inventive step of the invention, which is an important element of the patent invention, "the emergency exit processing device using mobile communications network and its method," which is the main element of the patent invention

[1] In order to determine whether the nonobviousness of an invention is denied pursuant to Article 29(2) of the former Patent Act (amended by Act No. 7871 of Mar. 3, 2006), it shall be deemed, based on an ordinary technician, to facilitate the invention from the prior art invention at the time of the application for the invention, and it shall not be determined ex post facto whether an ordinary skilled person can easily make the invention on the premise that he/she knows the technology described in the specification of the invention, which is subject to the determination of whether the nonobviousness is denied.

[2] The case holding that it is not allowed to determine the inventive step of the patented invention ex post facto on the premise that the information disclosed in the specification of the patented invention is known that the patented invention can easily be seen from the "a composition that records the fact that the subscriber's emergency pressing of the device is divided into a device," or "a composition that records the situation without a device from the security center to a device," in determining whether the inventive step of the patented invention is denied, on the ground that the patented invention's name "a control system and its method to process emergency call using a mobile communication network," is an element of "a control system that prohibits the reception of the receiving part of the receiving part of the transmission part and only permits the transmission of the transmitting part of the voice through the transmitting part of the transmitting part"

[1] Article 29 (2) of the former Patent Act (amended by Act No. 7871 of March 3, 2006) / [2] Article 29 (2) of the former Patent Act (amended by Act No. 7871 of March 3, 2006)

Plaintiff 1 and one other

Seocho Telecom Co., Ltd. (Patent Attorney Lee Young-young et al., Counsel for the defendant-appellant)

Lburcom Co., Ltd. (Law Firm Spare, Attorneys Gyeong-Jon et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2005Heo1554 decided Dec. 16, 2005

The judgment below is reversed and the case is remanded to the Patent Court.

The grounds of appeal are examined (to the extent of supplement in case of the supplemental appellate brief filed after the expiration of the submission period).

1. Article 29(2) of the former Patent Act (amended by Act No. 7871 of Mar. 3, 2006; hereinafter the same) provides that a patent shall not be granted to an invention that is easily made by a person with ordinary knowledge in the art to which the invention pertains (hereinafter referred to as “ordinary technician”) from an invention publicly known or publicly worked in the Republic of Korea prior to a patent application referred to in paragraph (1), an invention published in a publication distributed inside or outside the Republic of Korea, or an invention that can be easily made by a person with ordinary knowledge in the art to which the invention pertains (hereinafter referred to as “prior art invention”). In order to determine whether the nonobviousness of an invention is denied under this provision, it shall be deemed that the invention can be easily made from the prior art at the time of the application for the invention, on the basis of an ordinary technician’s knowledge of the technology disclosed in the specification of the invention subject to determination as to whether the nonobviousness is denied, and it shall not be determined ex post facto whether an ordinary technician can easily make the invention.

2. According to the reasoning of the lower judgment, the lower court determined that: (a) in determining the inventive step of the instant patented invention under the name of “emergency response devices using mobile communications networks and their methods” (which was filed on September 10, 201 and registered as No. 379, 946 on March 31, 2003); and (b) Claim No. 3 (hereinafter “ Claim No. 3 Claim No. 1”) claimed for the correction of the instant patented invention in preparation for comparable invention 1 and 2 as indicated in the lower judgment, the lower court divided the instant Claim No. 3 into the premise and element No. 1 to 4; (b) the premise that the instant Claim No. 3 Claim No. 1 to be corrected is an example of the composition of the general mobile communication device; and (c) the elements No. 1 to No. 3 were easily predicted by comparable invention No. 1 and No. 4 of the instant Claim No. 1 to No.

Furthermore, the lower court determined that the nonobviousness of the patent claim No. 1 of the instant patent invention prior to the claim for correction was denied on the grounds as seen above, and that the nonobviousness of the patent claim No. 2 through 4, 7, and 14, which are subordinate to the claim No. 9, expressed as a method invention, and that the nonobviousness of the patent claim No. 1 of the instant patent invention was denied on the extension line.

However, it is difficult to accept such judgment of the court below for the following reasons.

Examining the aforementioned legal principles and records, the composition of comparable invention 1 as indicated in the judgment of the court below, which deemed that the correction of the Claim 1 was corresponding to the elements of the Claim 4 of the instant Claim 1, is being commenced, but the term of the specification is in principle interpreted in a general sense, so it is not different from the meaning that “communication arrives without any urine,” and the comparable invention 1 as indicated in the judgment of the court below, stating that “the signal transmission including instructions to change the method of call without any arbitracy,” and that “the composition of comparable invention 1 does not interfere with any person, and it is hard to find out that there is no other person’s external transmission of the instant Claim 1 from the No. 44 unless it is possible to operate the device on the grounds of the absence of the device at the site, etc., and thus, it is difficult to find out the fact that there is no other person’s external transmission of the instant Claim 1 using the corrected method without any other person’s action.

Nevertheless, the court below's determination that the inventive step is denied by comparable invention 1 and 2 as to the claim 3 invention claimed for correction of this case is erroneous in the misapprehension of legal principles as to inventive step of invention, which affected the conclusion of the judgment. Thus, the ground of appeal assigning this error is with merit.

3. Therefore, without examining the remaining grounds of appeal, we reverse the judgment of the court below and remand the case to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices.

Justices Park Si-hwan (Presiding Justice)