Whether a decrease in the increase within the scope of the initial application constitutes a change in the summary (negative)

Where the scope of a patent claim is increased, reduced or modified within the scope of the matters described in the specification or drawing(s) originally submitted in the patent application, the amendment is merely an amendment not to fall under the modification of the substance of Article 15(3) of the Enforcement Rule of the Patent Act (Ordinance of the Ministry of Trade, Industry and Energy No. 401

Article 15(3) of the former Enforcement Rule of the Patent Act (Ordinance No. 401 of the Ministry of Trade, Industry and Energy No. 401), Article 10-3 of the Patent Act

x.C. Osararment position

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Office Decision 528 decided January 27, 1983

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

The ground of appeal by the claimant is examined.

1. According to the reasoning of the original decision, the court below rejected the validity of the above amendment, which determined that the amendment of the specification of November 22, 1980 by the claimant was made to delete the description of the part concerning the e-mail from the scope of the initial patent claim, and added matters concerning the structure of the electronic e-mail (G3) and (G4). However, this added matters that were not included in the claims of the initial divisional application, and subsequently denied the validity of the above amendment. Since the statement concerning the e-mail prior to the amendment was not clearly explained in the specification, the summary of the claim is unclear, and therefore, the application of this case maintains the ruling of rejection by the claimant on the ground that it did not meet the requirements of the patent.

2. However, according to Article 15(3) of the former Enforcement Rule of the Patent Act (amended by Ordinance of the Ministry of Trade, Industry and Energy No. 401, Dec. 31, 1973; the Enforcement Rule amended by Ordinance of the Ministry of Trade, Industry and Energy) which was enforced at the time of the above amendment, an applicant may supplement the application, specification, and drawings only before the publication of the application is made, and there is no change in the substance of the supplement. The above change in the substance refers to an increase, decrease, or change in the scope of the patent claim stated in the specification, or a decrease or change in the scope of the patent claim within the scope of the matters described in the specification or drawings originally submitted in the application. However, before the publication of the application is made, an applicant shall not be deemed to be a change in the substance of the application where the scope of the patent claim is increased, decreased, or changed within the scope of the matters described in the specification or drawing(s) stated in the application. This is because, in this regard, the applicant shall not give disadvantages to the applicant who could not submit the application under the application.

3. If so, the original decision did not consider that the amendment made by the claimant on November 22, 1980 added matters which were not originally included in the original claim scope to the scope of the patent claim, thereby constituting an alteration of the purport of the patent claim. It does not constitute an alteration of the purport of the specification by misapprehending the legal principles as to the amendment of the substance of the specification and an incomplete deliberation. If the court below deliberated whether the structure of the common gap (G3), and (G4) of the electronic guns (G3), as stated in the above amendment, has already been described in the specification and drawing(referring to the statement of reasons for appeal) as in the claimant's assertion (referring to the statement of reason for appeal), the amendment in this case should have been amended within the scope of the original specification or drawing(s) and received a valid amendment.

Ultimately, since the arguments are reasonable, the original adjudication is reversed, and the case is remanded to the Korean Intellectual Property Office Appeal Trial Office for a new trial. It is so decided as per Disposition by the assent of all participating judges.

Justices Lee Lee Sung-soo (Presiding Justice)