[1] Requirements for patent for selective invention and the method of proving its effects

[2] The case reversing and returning the judgment of the court below which found the effect of another compound on the basis of data proving the effect of a part of the compound with an excellent effect among the multiple compounds constituting the selective invention

[1] The so-called selective invention whose elements are stated in the preceding or publicly known invention as a superior concept and all or part of the subordinate concepts included in the above upper concept is the subject of a patent, first, if the preceding invention does not specifically start the subordinate concepts comprising the selective invention, second, if all subordinate concepts included in the selective invention have effects different in quality from those of the preceding invention, or if there is no qualitative difference in quality, and if there is a substantial difference in quantity, a patent can be granted. In this case, the detailed description of the selective invention is sufficient to clearly state the above effects compared to the preceding invention, and it is not necessary to state the comparative experiment material to clearly confirm the apparentness of its effects, and if there is doubt about its effects, the applicant can claim and prove its effects in detail by the method of submitting the specific comparative experiment material after the filing date.

[2] The case reversing the judgment of the court below that the chemical formula (Ⅳ) among the compounds included in the invention for patent application containing the name "Gromatic cromatic compound" can be lower than that of other compounds because it is evident that the chemical formula (Ⅳ) compound is excluded from desirable compounds, and the chemical formula (Ⅳ), among the compounds included in the invention for patent application containing the name "Gromatic cromatic compound" is not excellent in the composition of the other optical cromatic body in terms of pharmacological action, and the other optical croology cannot be seen as excellent in the activity of the other optical cromatic body, and the other optical cromatic body in the case where the other optical cromatic cromatics are excellent in the composition of the invention for patent application, despite the fact that it is difficult to confirm the effect of chemical formula (Ⅳ) compound by comparison data on the effects of the chemical formula (Ⅲ), the effect of the chemical formula cannot be confirmed by comparison data on the effects of the chemical formula (Ⅲ), the entire application specification or the entire application data are found to have the effect in comparison (Ⅲ).

[1] Article 29(2) of the Patent Act / [2] Article 29(2) of the Patent Act

[1] Supreme Court Decision 2001Hu2375 decided Dec. 26, 2002 (Gong2003Sang, 543)

Mocop (Pflize Co., Ltd.) (Patent Attorney Kim Chang-soo et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 200Heo551 delivered on July 13, 2001

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

1. The judgment of the court below

가. 명칭을 "신경보호성 크로만 화합물"로 하는 이 사건 출원발명의 특허청구범위 제1항(이하 '이 사건 제1항 발명'이라고 한다)은 아래의 화학식(I)을 갖는 (3Rㅛ,4Sㅛ)-3-[4-(4-플루오로페닐)-4-하이드록시-피페리딘-1-일]-크로만-4,7-디올 화합물{이 사건 화학식(I) 화합물}, 그의 광학이성질체 및 그의 약학적으로 허용 가능한 염에 관한 것이고, 이 사건 출원발명의 출원 전에 반포된 특허공보 제93-11041호에 기재된 발명(이하 '인용발명'이라고 한다)은 아래의 일반식(I) 화합물 및 그의 염에 관한 것으로서, 인용발명의 일반식(I)에서 A, B, X, X1, Z, Z1, n 및 m의 선택에 따라 청구하고 있는 화합물의 종류는 상당히 광범위하고, 그 중 A 및 B가 각각 H, X가 O, X1이 OH, Z가 OH, Z1이 F, n이 1, m이 0인 경우의 화합물은 이 사건 화학식(I) 화합물과 동일한 화합물이다{일반식(I)에서 치환기의 정의는 생략한다}.

B. Claim Nos. 2 through 4, and 17 of the Claim Nos. 17 of the invention claimed in the patent application of this case are related to Lane of the chemical (I) compound of this case, priority of luminous (I), e.g., e., e., e., tar e., e., tar e.g., e., e., e., e., e., e., e., e., e., e., e., e., e., e.,

C. The chemical (I) compound of this case is about F in the general formula (I) of the quoted invention. However, the quoted invention is defined as H, F, Cl, B, or (C1 to C3) Z in its specification, while the chemical (I) compound of this case is defined as H, F, Cl, B, or (C1 to C3) Z in its specification, the chemical (I) compound of this case includes only H in its execution 1 to 35, but also the chemical (I) compound of the general formula (I) is described as the H in its execution 1 to 35, and the chemical (I) compound of this case is the H. Therefore, the quoted invention cannot be said to have specifically commenced the chemical (I) compound of this case.

D. In the specification of the patent application invention of this case, "the invention of this case refers to the chemical formula (I) chemical formula (I), which has exceptional oral activation, and the chemical formula (I) compound of this case, is described as "the chemical formula (I) chemical compound of this case) is more effective than the other chemical compounds initiated in the U.S. Patent Law No. 07/916,130 (U.S. response patent)."

E. The evidence No. 6 submitted after the filing date of the patent application invention of this case contains data comparing the activation of the chemical (I) compound of this case and the quoted invention with the chemical (I) compound of this case obtained in accordance with the method of measurement stated in the specification. The chemical (I) compound of this case appears to be more than 10 times the quoted invention would have been executed, and the chemical (I) compound of this case stated in the evidence No. 6 of this case is more than 3 chemical (I) compound of this case and the quoted invention would be more than 3 chemical (I) compound of this case. The other location is the same in the general formula (I) compound of this case, and only one in the H (I) chemical (I) compound of this case, which is superior in the air ventilation compound of this case as stated in the evidence No. 6 of this case, are different from the other in the execution date of the quoted invention of this case. Thus, it can be known that the chemical (I) compound of this case, other than the 3 compound of this case, can be seen compound of this case.

F. Ultimately, the invention of this case and the cited invention are related to a compound with CNS (CNS vous Nystem; midstal boundary), which is used for treating sedative diseases, and the excellent effect of the invention of this case compared with the cited invention in the specification of the patent application of this case is clearly stated, and it is recognized that the chemical formula (I) compound of this case is superior to the cited invention’s compound by the evidence No. 6, and that the chemical formula (I) compound of this case is superior to the cited invention’s compound. Thus, the compound of the patent application of this case is recognized to have a substantial significance in its effect compared to the cited invention’s compound.

G. Therefore, the nonobviousness of the instant Claim 1 invention is recognized as a selective invention, and the nonobviousness of the instant Claim 1 invention is recognized as a matter of course in detail by specifying the compound of the instant Claim 1 invention.

2. Judgment of the Supreme Court

A. The so-called selective invention whose elements are stated in the preceding or publicly known invention as a superior concept and all or part of the subordinate concepts included in the above upper concept is without commencing the subordinate concepts comprising the selective invention. First, the preceding invention is entitled to a patent only if the preceding invention does not specifically start the subordinate concepts comprising the selective invention, second, all subordinate concepts included in the selective invention have effects different in quality from those of the preceding invention, or if there is no qualitative difference in quality, or if there is a remarkable difference in quantity. In this case, the detailed description of the selective invention is sufficient to clearly state the above effects compared to the preceding invention, and it is not necessary to state the comparative experiment data that can confirm the apparentness of its effects in detail, and if there is doubt about its effects, the applicant can claim and prove its effects in detail by the method of submitting the specific comparative experiment data after the filing date.

B. In light of the above legal principles, the court below's adoption of Gap evidence No. 6 submitted by the applicant of the patent invention of this case for the purpose of proving the effect of the patent invention of this case as evidence to determine whether the effect of the patent invention of this case is significant, and it is just to have deliberated and decided upon it

(c) However, the invention of Paragraph 1 of this case contains three chemical compounds (3R, 4S)-3- [4-(4-prolorinated)-4-Libideidine-1-Cine-4,7-diol compounds [the following chemical formula (II), + (3R, 4S)-3- [4-(4-(4-prololoriphenyl)-4-Libideidine-1-one)-Libine-4,7-diol compound [3-(3)-(S4)-(4-4)-4,7-4 (3)-4-(4-4-4-4 (4-proloriphenyl)-1-4-4-4-diol chemical compound of this case (Ⅳ), the court below's error in the claim 1-7 (4)-4-diol chemical compound of this case is clearly identical to that of the above chemical compound (IV)-1-4,7-47-diol chemical compound of this case).

D. However, according to the records, Gap evidence No. 6 is merely an experimental material that compares only the chemical (III) compound with the similar structure among the cited inventions, not the entire invention of this case, and the invention of this case refers to the desirable compound in the invention of this case (± d. h. h. h. h. h. h. h. h. h.) and (+ h. h. s. h. h. h. h. h. h. h. h. h. g. h. h. h. g. h. g. h. h. h. h. g. h. h. g. h. h. g. h. h. g. g. h. g. h. g. h. g. h. h. g. h. g. h. h. h. h. g. h. g. h. h. h. h. h. h. h. h. h. h. h.

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 Byun Jae-chul (Presiding Justice)