Commercialization of hardware

In general, a computer is composed of control devices, logic/explosive devices, memory devices, and input/explosive power devices. The hardware, which is the mechanical equipment, is not capable of carrying out independent work and performs functions such as control, logic, smoke, and suppression for specific purposes according to the direction of work performed by a software-related work. Thus, in the application for a device invention using a computer as a functional means, if the hardware is used particularly designed to have an independent work ability unique to the device in the application for a device invention using a computer as a functional means, it is reasonable to view that even if the detailed explanation on the composition of the hardware itself is not written in a patent application, if the hardware has an average work ability in the field related to the computer, it can be understood that the contents of the hardware can be understood sufficiently.

Article 8 of the former Patent Act (amended by Act No. 3325 of Dec. 31, 1980); Article 1(4) of the former Enforcement Decree of the Patent Act

Supreme Court Decision 84Hu43 Delivered on May 28, 1985

Attorney Lee Jae-ho et al., Counsel for the defendant-appellant, Kim Il-young et al., Counsel for the defendant-appellant

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Office Act No. 709 of Apr. 9, 1984 or a trial ruling of appeal No. 1983

The original adjudication shall be reversed, and the case shall be remanded to the Korean Intellectual Property Trial Office.

We examine the grounds of appeal.

원심심결 이유에 의하면, 원심은 본원발명의 요지를 특허청구범위에 기재된대로 설시하고 나서 이러한 통신장치용 추적제어장치를 구성하는 회로의 구체적 사항이 명세 및 도면에 명확하게 나와 있지 않고 작동에 대한 설명도면(3,4,5,6도)으로는 알 수가 없다고 하면서 제1스테이션(S₁)과 추적스테이션(S₃)의 구체적 회로구성 및 장치가 명확하지 아니하여 추적스테이션(S₃)이 통화중일 때 제1표시를 하는 동작을 알 수 없고, 표시장치의 구성이 구체적으로 명세서에 설명되어 있지 않은데다 도면도 제대로 되어있지 않으며, 추적스테이션이 비통화중일때 제1스테이션에 제2표시를 하는 표시장치 또한 구성이 불명확하게 되어 있어 본 기술분야에서 통상의 지식을 가진 자가 실시할 수 있도록 되어 있다고 볼 수 없으므로 특허법 제8조 및 같은법시행령 제1조 제4항 의 규정에 따라 거절사정한 원사정은 적법한 것이라고 판단하고 있다.

According to Article 8 of the former Patent Act (amended by Act No. 3325 of Dec. 31, 1980) and Article 1(4) of the Enforcement Decree of the same Act (amended by Presidential Decree No. 10428 of Jul. 30, 1981), the patent application shall explain the purpose, composition, function, and effect of the invention to the extent that a person with ordinary knowledge in the technical field to which the invention pertains can easily implement the invention. The purport of the above provision is to clarify the technical scope by publishing the contents of the invention to a third party. The extent that a person with ordinary knowledge in the technical field to which the invention pertains can easily implement the invention is the invention refers is that the person with average technical ability in the technical field to which the invention pertains is based on the technical level at the time of the application refers to the extent that any person can clearly understand the contents of the invention, and thus, it is not necessary to specify the technical method when the technical means using the invention belongs to the technical level at the time of the application.

In general, a computer is composed of control devices, logic, memory devices, memory devices, and input output devices. The hardware, which is the mechanical equipment, does not have independent work ability and functions such as control, logic, smoke, memory, and memory for a specific purpose according to a work implementation order of a software, and thus, the hardware itself is a criminality. Therefore, in an application for a device invention using a computer as a means of functional practice, if the hardware specifically designed to have an independent work ability unique to the device is used, it may be known if it is used, but if it is used in a specific device with a specific device, it is reasonable to view that even if a patent application does not include a detailed explanation on the composition of the hardware itself in a patent application, if it is a person who has an average work ability in the field related to the computer, the contents of the hardware can be understood sufficiently (see Supreme Court Decision 84Hu43 delivered on May 28, 1985).

However, in light of the detailed description of the invention, the computer memory device, control device, logic, and studio apparatus, etc. used as a means of functional practice. The mechanical composition of the original invention is generally urbanized in levels 1 and 2 of the specification, and the aforementioned computer devices performing specific functions, such as tracking, verifying, warning, and tamping for the original invention, do not appear to be a special hardware with its own ability to perform work without the instruction of the program. Thus, even if the specific circuit composition of the computer itself performing the characteristic function of the original invention is not clearly urban and explained in the specification, it cannot be concluded that the mere fact that a person with ordinary skill in the technical field of the invention does not allow the technical field to understand its function. However, in the case of the original invention of the main device using the computer application devices as a means of functional practice, the court below should have clearly explained whether there is a reason for refusal in the technical field, to the extent that it can be easily understood by the person with ordinary knowledge and skills.

Nevertheless, the original trial decision states that, without distinguishing between the two parts of the computer hardware itself’s circuit composition, the structure of its applied devices, and the mechanical composition, the specific matters of the circuit consisting of the invention are not clear in the specification and drawings, and the explanation of its operation cannot be easily made by a person with ordinary knowledge in the technical field of the invention, and it is erroneous in the misapprehension of the scope of the detailed description of the invention to be entered in the patent application under the Patent Act, or in the failure of the trial decision due to a failure to exhaust all necessary deliberations.

The argument is with merit.

In addition, when examining the claims and the detailed description of the invention in the patent application of this case, it is difficult to clearly understand the scope of effects of the patent right because the expression of the patent application of this case is vague and complicated, and the detailed description of the invention also uses the same meaning different from each other, and it is difficult to understand its meaning due to its childbirth, the court below should, in mind, determine whether the requirements in the patent application of this case are satisfied and the detailed description of the invention has been made to the extent that the person having average technical ability in the art of this case can clearly understand the contents of the invention.

Therefore, in order to reverse the original trial decision and remand the case to the Korean Intellectual Property Office Appeal Trial Office. It is so decided as per Disposition by the assent of all participating judges.

Justices Lee Byung-hee (Presiding Justice)