Whether a patent is granted for an invention with a new effect beyond the expected effect from the publicly known prior art (affirmative)

When it is deemed that the art claimed in the application has more than a new more scopic effect than the prior art predicted by the publicly known prior art, in light of the purpose of the patent system promoting the advancement and development of the technology, it shall be deemed that the invention is non-obviousness and that the person with ordinary knowledge in the field of the technology to which the invention pertains can easily make an invention, and thus, the patent may be granted.

Article 6(2) of the Patent Act

Supreme Court Decision 82Hu72 delivered on April 26, 1983, 83Hu38 delivered on February 23, 1988, 88Hu516 delivered on July 11, 1989, 87Hu102 delivered on January 25, 1990

Madex Dex Gaaba et al., Counsel for the defendant-appellant-appellant

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Trial Office Decision 88Na923 dated May 31, 1989

The original adjudication shall be reversed.

The case shall be remanded to the Korean Intellectual Property Office Appeal Office.

The grounds of appeal by the applicant’s attorney are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. The purport of Article 6(2) of the Patent Act, if an invention claimed in a patent application, prior to the filing of a patent application, is an invention that has ordinary knowledge in the field of the technology to which the invention pertains or worked publicly known in the Republic of Korea or an invention described in a publication published inside or outside the Republic of Korea, the patent cannot be granted if the invention described in the patent application, is a new technology that can easily be derived from the existing technology, if it is a creation that can easily be derived from the existing technology, the invention is deemed non-obviousness, and at least, if it is deemed that at least a new risen effect beyond the expected effect from the prior art published in the patent application, and if it is determined that the applied technology has significantly improved compared with the prior art, in light of the purpose of the patent system to promote the progress and development of the technology, it shall be deemed that the invention could not be easily made by a person with ordinary knowledge in the field to which the invention pertains, and thus, the patent applicant can be granted a patent (see, e.g., Supreme Court Decision 8Hu1028, Jul. 28, 198888; 2018.

2. Upon filing an application on March 31, 1984, the court below recognized that the purpose of the application is the same as the method of measuring the hydrogen as the method of measuring the hydrogen, and that the basic frame of each location of the chemical compounds is the same as the method of measuring the hydrogen by measuring the degree of the formed color, and that the invention can not be easily different in terms of the technical composition, since the basic framework of the compounds used as color material is not only the same in terms of technical composition, but also within the scope of the definition of the ventilation of each location, and that the invention can be easily determined by the person who has the ordinary skill in the field of patent refusal in the field of patent application, since it is recognized that there is a significant difference in the patent application's effects in the field of patent invention.

3. However, according to the records, an applicant claims that the invention is identical to the cited invention, but the chemical compounds used as color body in the original invention are identical to the cited invention; however, the applicant has submitted experimental results which measure the increase in the shape of the original invention, the chemical compounds used as color body and structural differences from the cited invention previously disclosed by the applicant; the maximum smoking ray is growing and the reaction components are not affected by colors of other reaction components; thus, the applicant enhances its utilization level; it is more accurate and detailed than easy, and it is possible to measure the oxygen, and the court below did not properly determine the inventive step of the original invention, as it did not have any errors in the misapprehension of legal principles as to the inventive step, since the applicant did not properly determine the inventive step of the original invention, despite the specific characteristics and effects of the chemical compounds used as color body in the original invention, which affected the inventive step of the original invention. Therefore, the court below did not err in misapprehending the legal principles as to the inventive step of the original invention.

4. Therefore, the original adjudication shall be reversed, and the case shall be remanded to the Korean Intellectual Property Office for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices.

Justices Lee Jae-sung (Presiding Justice)