[1] The mandatory provisions of Article 159(1) of the former Patent Act and whether the Korean Intellectual Property Tribunal's ex officio deliberation in a trial proceeding by the Korean Intellectual Property Tribunal is unlawful in the trial decision without providing the parties or intervenors with an opportunity to state their opinions

[2] The case holding that there was no violation of procedural violation in a trial procedure on the ground that even if the Intellectual Property Tribunal did not formally give the Plaintiff an opportunity to state his/her opinion on the grounds of ex officio examination when examining whether the specification of the patented invention was incomplete ex officio in the trial procedure, the actual opportunity to state opinion was given

[3] The legislative purport of Article 8(3) of the former Patent Act and the meaning of “the extent to which a person with ordinary knowledge in the art to which the invention pertains can easily perform” under the same Article

[1] Article 159(1) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) which provides that a party or intervenor shall be given an opportunity to state his/her opinion on the grounds ex officio in a trial proceeding of the Intellectual Property Tribunal is a so-called compulsory provision due to the public interest demand that the trial should be properly conducted to maintain the credibility of the trial system. Thus, a trial decision made by the Intellectual Property Tribunal without providing the party or intervenor with an opportunity to state his/her opinion as to the grounds ex officio without providing the party or intervenor with an opportunity to state his/her opinion, in principle, cannot be deemed unlawful. However, if there are special circumstances that make it possible to deem that a party or intervenor has been given an opportunity to state his/her opinion even if he/she had not given an opportunity to state

[2] The case holding that there was no violation of procedural violation in a trial procedure on the ground that even if the Intellectual Property Tribunal did not formally provide the Plaintiff with an opportunity to state his/her opinion on the grounds of ex officio examination, it should be deemed that there was an opportunity to state his/her opinion.

[3] Article 8 (3) of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990) provides that "The detailed description of the invention shall state the purpose, construction, action, and effect of the invention to the extent that the person with ordinary knowledge in the art to which the invention pertains can easily implement the invention." The purpose of such provision is to clarify the technical content and scope to be protected as a patent right by disclosing the contents of the invention so that a third party can easily understand it only with the specification, and "the extent that the person with ordinary knowledge in the art to which the invention pertains can easily implement the invention" under Article 8 (3) of the former Patent Act refers to a person with ordinary technological understanding in the art to which the invention pertains, an average technician can understand the invention accurately without adding special knowledge to the technical level at the time of the application by considering the invention as a specification.

[1] Article 159 (1) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [2] Article 159 (1) of the Patent Act / [3] Article 8 (3) of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990) (see current Article 42)

[1] Supreme Court Decision 90Hu496 delivered on November 27, 1990 (Gong1991, 231), Supreme Court Decision 94Hu241 delivered on February 9, 1996 (Gong1996Sang, 954) / [3] Supreme Court Decision 95Hu1326 delivered on July 30, 1996 (Gong196Ha, 264), Supreme Court Decision 97Hu2477 delivered on July 23, 199 (Gong199Ha, 1784), Supreme Court Decision 2004Hu362 delivered on November 25, 2005 (Gong206Sang, 60)

Hul well-dying International Salkyal (Patent & Law Firm C.S. Patent & Law 4 others, Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Korean Island Association (Patent Attorney Kim Hong-soo et al., Counsel for the defendant-appellant)

Patent Court Decision 2003Heo588 delivered on January 8, 2004

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. As to the violation of procedure relating to ex officio hearing of the trial procedure of this case

A. Article 159(1) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) which provides that a party or intervenor shall be given an opportunity to state his/her opinion on the grounds ex officio in a trial proceeding of the Intellectual Property Tribunal is a so-called compulsory provision due to the public interest demand that the trial should be properly conducted to maintain the credibility of the trial system. As such, a trial decision made by the Intellectual Property Tribunal without providing the party or intervenor with an opportunity to state his/her opinion on the grounds ex officio, cannot be deemed unlawful in principle (see Supreme Court Decision 90Hu496, Nov. 27, 1990; 90Hu496, Nov. 27, 199). However, if there are special circumstances where it is possible to deem that a party or intervenor has not been given an opportunity to state his/her opinion, it shall be deemed that there was no violation of the procedure of ex officio hearing in the trial proceeding. (See Supreme Court Decision 94Hu2411, Feb. 9, 196)

B. In light of the above legal principles and records, although the Intellectual Property Tribunal deliberated on the non-conformity of the specification of the patented invention of this case in the trial procedure of this case, it does not fall under the grounds stated in the patent objection procedure submitted in the patent objection procedure or an amendment submitted within the legitimate correction period, if the Intellectual Property Tribunal deliberated on it without any measure, it would be deemed that the intervenor formally did not give the plaintiff an opportunity to state his opinion on the ground of ex officio examination. However, even after the correction period of the patent objection procedure of this case, the intervenor submitted a written statement disputing the non-conformity of the specification of the patented invention of this case after the correction period of the patent objection procedure of this case, and it was revealed as one of the grounds for the objection, and even in the trial procedure of this case where the plaintiff did not state the non-conformity of the specification of the patented invention of this case in the patent objection procedure of this case, the plaintiff did not have an opportunity to state his opinion other than the non-conformity of the specification of the patented invention of this case in the patent objection procedure of this case.

C. Therefore, the court below's decision to the same purport is just, and there is no error in the misapprehension of legal principles as to ex officio hearings in a trial procedure, as otherwise alleged in the ground of appeal.

2. As to the lack of description in the specification of the instant patent invention

A. Article 8(3) of the former Patent Act (amended by Act No. 4207, Jan. 13, 1990; hereinafter the same) provides that "The detailed description of the invention must state the purpose, composition, action, and effect of the invention to the extent that the person with ordinary knowledge in the art to which the invention pertains can easily implement the invention." The purport of such provision is to clarify the technical content and scope of the invention to be protected as a patent right by disclosing the contents of the patent application to a third party easily known only by the specification. Thus, "the extent that the invention can easily be implemented by a person with ordinary knowledge in the art to which the invention pertains" under Article 8(3) of the former Patent Act refers to a person with ordinary technical understanding in the art to which the invention pertains, an average technician can understand the invention accurately without adding special knowledge to the technical level at the time of application based on the description of the invention (see Supreme Court Decision 2005Hu364, Nov. 25, 2005). 364.

B. Examining the reasoning of the judgment below in light of the above legal principles and the records, the court below is just in holding that the detailed description of the specification of the patented invention (patent registration number omitted) of this case using the name of "water control stability polystehers manufacturing method" is not stated in the purpose, composition, and effect of the invention to the extent that a person with ordinary knowledge in the art to which the invention pertains can easily practice the invention, and there is no error in the misapprehension of legal principles as claimed in the grounds of appeal.

3. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Kang-soo (Presiding Justice)